AOL LLC v. Private / Anders Bjorkman
Claim Number: FA0903001250536
Complainant is AOL
LLC (“Complainant”), represented by James
R. Davis of Arent Fox LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <icq.nu>, registered with .NU Domain Ltd.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically March 4, 2009; the National Arbitration Forum received a hard copy of the Complaint March 5, 2009.
On March 4, 2009, .NU Domain Ltd confirmed by e-mail to the National Arbitration Forum that the <icq.nu> domain name is registered with .NU Domain Ltd and that Respondent is the current registrant of the name. .NU Domain Ltd verified that Respondent is bound by the .NU Domain Ltd registration agreement and thereby has 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 12, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 1, 2009, 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@icq.nu by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 9, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
Preliminary Issue: Other Correspondence
Respondent sent an e-mail to the National Arbitration Forum
that has been labeled as Other Correspondence.
The Forum determined that this
correspondence does not constitute a Response because it failed to comply with
ICANN Rule 5.
Respondent’s Other Correspondence, asserts that Complainant can purchase the domain name from Respondent and that Complainant could have registered the disputed domain name itself prior to Respondent’s registration. The Other Correspondence contains two admissions with adverse results for Respondent: (1) Respondent’s offer to sell the disputed domain name to Complainant would support findings of both lack of rights and legitimate interests under Policy ¶ 4(a)(ii), or (2) it would support findings of bad faith in registering and using Complainant’s mark in a competing domain name under Policy ¶ 4(b)(i). Further, Respondent’s statements might also be construed merely as legal argument. Since the Other Correspondence does not qualify as a Response and because its use is against Respondent’s interest, the Panel chooses not to consider Respondent’s Other Correspondence on the merits here.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <icq.nu> domain name is identical to Complainant’s ICQ mark.
2. Respondent has no rights to or legitimate interests in the <icq.nu> domain name.
3. Respondent registered and used the <icq.nu> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AOL LLC, provides information over the Internet on various topics, including personal advice, news, health, technology, online directories, etc. Complainant owns the ICQ mark and has registered the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,411,657 issued December 12, 2000) and the Swedish trademark authority (Reg. No. 338,366 issued June 9, 2000).
Respondent registered the <icq.nu> domain name September 3, 2001. The disputed domain name resolves to a personal ICQ website. In correspondence with Complainant, Respondent requested that Complainant make an offer for the disputed domain name for an amount higher than the registration costs.
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."
Given Respondent's failure to submit a response that complied with ICANN Rule 5, 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires Complainant to 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 set forth evidence of its rights in the ICQ mark through its registrations of the mark with the USPTO and the Swedish trademark authority pursuant to Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("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.").
The <icq.nu> domain name contains the ICQ mark
and adds the country-code top-level domain “.nu” to the end of the mark. The Panel finds that this alteration creates no
meaningful distinction, and thus finds that the disputed domain name is identical
to the mark under Policy ¶ 4(a)(i). See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec.
4, 2002) (finding that since the addition of the country-code “.us” fails to
add any distinguishing characteristic to the domain name, the <tropar.us>
domain name is identical to the complainant’s TROPAR mark); see also Basic
Trademark S.A. v. Antares S.p.A, FA 1130680 (Nat. Arb. Forum Mar. 4,
2008) (“The <robedikappa.us> domain name is identical to the ROBE DI
KAPPA mark. The only difference is the
omission of the space between the words and the addition of the ccTLD “.us,”
which does not significantly distinguish the domain name from the mark.”).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name. Because Complainant has established a prima facie case supporting its allegations, the burden shifts to Respondent to show that it does have rights to or legitimate interests under Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the 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 Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Even Respondent’s Other Correspondence did not suggest that Respondent
is commonly known by the disputed domain
name. The only evidence by which the
Panel may make a determination comes from the Complaint and the WHOIS domain
name registration information. The
registrant of the disputed domain name is listed in the WHOIS as “Private
/ Anders Bjorkman.” Complainant has
asserted that Respondent is not commonly known by the disputed domain
name. Therefore, the Panel finds that
Respondent lacks rights and legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(c)(ii). See Ian
Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable
evidence to support the assertion that a respondent is commonly known by a
domain name, the assertion must be rejected); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the
WHOIS contact information for the disputed domain [name], one can infer that
Respondent, Onlyne Corporate Services11, is not commonly known by the name
‘welsfargo’ in any derivation.”).
The disputed domain name also resolves
to a personal ICQ website wherein Respondent advertises his own business. The Panel finds that Respondent’s use of the
disputed domain name to divert Internet users to an ICQ website that in turn
promotes Respondent’s business is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii). See Bank
of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003)
(“Respondent’s demonstrated intent to divert Internet users seeking
Complainant’s website to a website of Respondent and for Respondent’s benefit
is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii).”); see also Wells Fargo & Co. v. Nadim,
FA 127720 (Nat. Arb. Forum Nov. 29, 2002) (finding that the respondent’s use of
the complainant’s WELLS FARGO mark to redirect Internet users to a domain name
featuring magazine subscriptions was neither a bona fide offering of
goods or services nor a legitimate noncommercial or fair use of the domain
name).
Complainant alleges as well that Respondent
offered to sell the disputed domain name for an amount in excess of its
registration costs and this also constitutes additional evidence of
Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding
that the respondent’s willingness to sell a contested domain name for more than
its out-of-pocket costs provided additional evidence that the respondent had no
rights or legitimate interests in the contested domain name); see also Vance Int’l, Inc. v.
Abend, FA 970871 (Nat. Arb. Forum June 8, 2007)
(“An attempt by a respondent to sell a domain name to a complainant who owns a
trademark with which the domain name is confusingly similar for an amount in
excess of out-of-pocket costs has been held to demonstrate a lack of legitimate
rights or interests.”).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Respondent’s willingness to sell the disputed domain name
for an amount in-excess of the registration costs permits an inference of a
primary intent to sell the disputed domain name. Therefore, the Panel finds that Respondent
demonstrates bad faith registration and use under Policy ¶ 4(b)(i). See Am. Online, Inc. v. Avrasya Yayincilik
Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad
faith where the respondent offered domain names for sale); see also Banca Popolare Friuladria S.p.A. v. Zago,
D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where the respondent offered
the domain names for sale).
In addition, Respondent is using the identical disputed
domain name to resolve to a personal ICQ website wherein Respondent promotes
its own unrelated business. That the
resolving website is an ICQ personal website significantly heightens the likelihood
of confusion as to Complainant’s endorsement or sponsorship of the identical
disputed domain name and resolving website.
The Panel finds that Respondent registered and used the disputed domain
name in bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum
June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv)
where the respondent was diverting Internet users searching for the complainant
to its own website and likely profiting); see
also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The
Panel finds such use to constitute bad faith registration and use pursuant to
Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing
similarity between the <metropolitanlife.us> domain name and
Complainant’s METLIFE mark in order to profit from the goodwill associated with
the mark.”).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <icq.nu> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 23, 2009.
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