AOL Inc. v. Private Person aka Sergei Dankov
Claim Number: FA1002001310277
Complainant is AOL Inc. (“Complainant”), represented by James
R. Davis, of Arent Fox LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <icqcool.net>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicd.
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 February 25, 2010; the National Arbitration Forum received a hard copy of the Complaint on March 1, 2010.
On March 2, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a Publicd confirmed by e-mail to the National Arbitration Forum that the <icqcool.net> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicd and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a Publicd has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicd 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 2, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 22, 2010 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@icqcool.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 29, 2010, 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 <icqcool.net> domain name is confusingly similar to Complainant’s ICQ mark.
2. Respondent does not have any rights or legitimate interests in the <icqcool.net> domain name.
3. Respondent registered and used the <icqcool.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AOL Inc., holds
multiple trademark registrations with the USPTO for the ICQ mark (e.g., Reg. No. 2,411,657 issued December
12, 2000) in connection with the provision of information in the fields of
personal advice, romance, general interest news, health, computers and
technology via computer networks.
Respondent, Private person a/k/a Sergei Dankov, registered the <icqcool.net> domain name on June 2, 2009. The disputed domain name resolves to a website that features Complainant’s mark and logo prominently. The website also includes numerous links to third-party sites that contain advertisements and other commercial content.
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. 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 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 asserts rights in its ICQ mark through its
holding of multiple trademark registrations with the USPTO (e.g., Reg.
No. 2,411,657 issued December 12, 2000).
The Panel finds that Complainant has established rights in the ICQ mark
under Policy ¶ 4(a)(i) through its registration with the USPTO. See
Expedia, Inc. v. Tan, FA 991075 (Nat.
Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered
with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Williams-Sonoma,
Inc. v. Fees, FA 937704 (Nat. Arb.
Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has
registered its trademark in the country of the respondent’s residence).
Complainant argues that
Respondent’s <icqcool.net> domain
name is confusingly similar to Complainant’s ICQ mark pursuant to Policy ¶
4(a)(i). Respondent’s disputed domain
name is confusingly similar as it incorporates the entirety of Complainant’s
mark, adds the generic term “cool” and the generic top-level domain (“gTLD”)
“.net.” The Panel finds that the
addition of the generic term “cool” creates a confusing similarity between the
disputed domain name and Complainant’s mark.
See Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126
(WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is
confusingly similar to the SUTTON mark because the addition of descriptive or
non-distinctive elements to the distinctive element in a domain name is
immaterial to the analysis under Policy ¶ 4(a)(i)); see also Am. Online, Inc. v.
Miller, FA 180625 (Nat. Arb. Forum Sept. 15, 2003) (finding confusing
similarity where “[t]he domain name includes Complainant’s mark with the
addition of the descriptive word “hot,” which does not dispel any confusion
arising from the inclusion of Complainant’s mark in the domain name.”). The Panel also finds that the addition of a
gTLD to a registered mark is irrelevant in distinguishing a disputed domain
name and a mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation
of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Katadyn N. Am. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Based on the arguments made in the Complaint, the Panel finds that Complainant has established a prima facie case in support of its contentions and Respondent has failed to submit a Response to these proceedings. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)).
The WHOIS information for the disputed domain name lists the
registrant as “Private person a/k/a Sergei
Dankov.” There does not appear to be any
evidence in the record to support that Respondent is commonly known by the
disputed domain name. Therefore, the
Panel finds that Respondent is not commonly known by the disputed domain name
pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v.
WORLDTRAVELERSONLINE.COM, FA
740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not
commonly known by the <cigaraficionada.com> domain name under Policy ¶
4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding
that the respondent was not commonly known by the <coppertown.com> domain
name where there was no evidence in the record, including the WHOIS information,
suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s
disputed domain name resolves to a website that includes numerous links to third-party sites that
contain advertisements and other commercial content. The Panel finds that Respondent’s use is
neither a bona fide offering of goods
and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or
fair use pursuant to Policy ¶ 4(c)(iii).
See Royal Bank of Scotland Grp
plc et al. v. Demand Domains, FA 714952 (Nat. Arb.
Forum Aug. 2, 2006) (finding that the operation of a commercial web directory
displaying various links to third-party websites was not a use in connection
with 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), as the respondent presumably earned “click-through” fees for each
consumer it redirected to other websites); see
also Black & Decker Corp. v. Clinical Evaluations, FA 112629
(Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the
disputed domain name to redirect Internet users to commercial websites,
unrelated to the complainant and presumably with the purpose of earning a
commission or pay-per-click referral fee did not evidence rights or legitimate
interests in the domain name).
Respondent’s
disputed domain name resolves to a website that also features Complainant’s mark
and logo prominently. The website also
includes numerous links to third-party sites that contain advertisements and
other commercial content. The Panel
finds that Respondent’s prominent display of Complainant’s mark and logo
constitues an attempt by Respondent to pass itself off as Complainant. Therefore, the Panel finds that Respondent’s
use of the disputed domain name to pass itself off as Complainant is further
evidence that Respondent lacks rights and legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(a)(ii).
See Am. Int’l Group, Inc. v.
Busby, FA
156251 (Nat. Arb. Forum May 30, 2003) (finding that the
respondent attempts to pass itself off as the complainant online, which is
blatant unauthorized use of the complainant’s mark and is evidence that the
respondent has no rights or legitimate interests in the disputed domain name); see also Dream Horse Classifieds v.
Mosley, FA 381256 (Nat. Arb. Forum
Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the
complainant by implementing a color scheme identical to the complainant’s was
evidence that respondent lacks rights and legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(a)(ii)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent is using the disputed domain
name to intentionally attract Internet users and profit through the receipt of
pay-per-click fees. The Panel finds that
Respondent’s use of the disputed domain name is evidence of bad faith pursuant
to Policy ¶ 4(b)(iv).
See Reese v. Morgan, FA
917029 (Nat. Arb. Forum Apr. 5, 2007) (holding that the respondent was taking
advantage of the confusing similarity between the <lilpunk.com> domain
name and the complainant’s LIL PUNK mark by using the contested domain name to
maintain a website with various links to third-party websites unrelated to
Complainant, and that such use for the respondent’s own commercial gain
demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Williams-Sonoma, Inc. v. Fees, FA 937704
(Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar
domain name to display links to various third-party websites demonstrated bad
faith registration and use pursuant to Policy ¶ 4(b)(iv)).
The Panel finds that
Respondent’s use of the disputed domain name to attempt to pass itself as
Complainant is further evidence of bad faith registration and use pursuant to
Policy ¶ 4(a)(iii). See 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 the respondent hosted a
website that “duplicated Complainant’s mark and logo, giving every appearance
of being associated or affiliated with Complainant’s business . . . to
perpetrate a fraud upon individual shareholders who respected the goodwill
surrounding the AIG mark”); see also Target
Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14,
2004) (finding bad faith because the respondent not only registered
Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET
mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain
name] . . . to a point of being indistinguishable from the original.”).
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 <icqcool.net> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: April 12, 2010
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