AOL Inc. v. Bondarenko A Pavel
Claim Number: FA1006001328932
PARTIES
Complainant is AOL Inc.
represented by James R. Davis, of Arent Fox LLP, (“Complainant”),
Virginia, USA Respondent is Bondarenko A Pavel, (“Respondent”),
Russian Federation.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <icqshop.us>,
registered with DIRECTI INTERNET
SOLUTIONS PVT. LTD. d/b/a
PUBLICDOMAINREGISTRY.COM.
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.
Judge Ralph Yachnin as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on June 8, 2010; the Forum received a hard copy of
the Complaint on June 16, 2010.
On June 11, 2010, DIRECTI INTERNET SOLUTIONS
PVT. LTD. d/b/a
PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the Forum that the <icqshop.us> domain name is registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM and that Respondent is the
current registrant of the name. DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a
PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the DIRECTI
INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with the U. S. Department of Commerce’s usTLD
Dispute Resolution Policy (the “Policy”).
On June 17, 2010, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of July 7, 2010 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for
usTLD Dispute Resolution Policy (the “Rules”).
Having received no Response from Respondent, the Forum transmitted to
the parties a Notification of Respondent Default.
On July 13, 2010, pursuant to Complainant’s request to
have the dispute decided by a single-member Panel, the Forum appointed Judge
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. Therefore,
the Panel may issue its decision based on the documents submitted and in
accordance with the Policy, the 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 name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <icqshop.us> domain name is confusingly similar to Complainant’s ICQ mark.
2. Respondent
does not have any rights or legitimate interests in the <icqshop.us>
domain name.
3. Respondent
registered and used the <icqshop.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, AOL, Inc.,
is the owner of its ICQ mark that it uses in relation to telecommunication
services, personal advice, romance, news, and chat rooms, as well as many other
uses. Complainant owns trademark
registrations with the United States Patent and Trademark Office
("USPTO") for its ICQ mark (Reg. No. 2,411,657 issued Dec. 12, 2000)
and
Respondent registered the <icqshop.us>
domain name on August 9, 2008.
Respondent’s disputed domain name resolves to a website that displays
Complainant’s ICQ mark and flower logo, purports to sell ICQ numbers, and
contains a forum-type chat feature similar to Complainant’s official
website.
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 the Complainant's undisputed
representations pursuant to Paragraphs 5(f), 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 the 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 the
Respondent is identical or confusingly similar to a trademark or service mark
in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered or is
being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent
as applicable in rendering its decision.
Identical
and/or Confusingly Similar
Complainant has submitted evidence to show
that it owns trademark registrations for its ICQ mark with the USPTO (Reg. No.
2,411,657 issued Dec. 12, 2000) and ROSPATENT (Reg.
No. 186,352 issued March 24, 2000). The
Panel finds that Complainant has established rights in its mark under Policy ¶
4(a)(i) through its trademark registrations. 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 [UDRP] ¶ 4(a)(i).”); see also Metro.
Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a
trademark registration adequately demonstrates a complainant’s rights in a mark
under UDRP ¶ 4(a)(i)).
Complainant argues that Respondent’s <icqshop.us> domain name is confusingly similar to Complainant’s ICQ mark because it contains Complainant’s entire mark in addition to the generic term “shop” and the country-code top-level domain (“ccTLD”) “.us.” The Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s ICQ mark under Policy ¶ 4(a)(i). See L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with the complainant’s registered mark “llbean” does not circumvent the complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights
or Legitimate Interests
Complainant has alleged that Respondent does not have any rights and legitimate interests in the <icqshop.us> domain name. The Panel finds Complainant has produced a sufficient prima facie case. Therefore, the burden of proof has properly shifted to Respondent to prove it has rights and legitimate interests in the <icqshop.us> domain name under Policy ¶ 4(a)(ii). The Pane finds that Respondent’s failure to respond to the Complaint allows the Panel to infer that Respondent does not have rights and legitimate interests in the disputed domain name. See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”); see also 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 [UDRP].”). However, the Panel will examine the record to determine whether Respondent has rights and legitimate interests in the disputed domain name under Policy ¶ 4(c).
The Panel finds that there is no evidence in the record indicating that Respondent owns any service marks or trademarks that reflect the <icqshop.us> domain name. Therefore, the Panel finds that Respondent does not have rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002 (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sep. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant argues that Respondent is neither commonly known by the disputed domain name, nor has Complainant given Respondent permission to use its ICQ mark. The WHOIS information for the disputed domain name identifies “Bondarenko A Pavel” as the registrant, which does not indicate that Respondent is commonly known by the <icqshop.us> domain name. Therefore, the Panel finds that, absent evidence showing otherwise, Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(iii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Tercent Inc. v. Lee 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 UDRP ¶ 4(c)(ii) does not apply).
Complainant contends that Respondent is using
the disputed domain name to advertise and promote online communications
services in competition with Complainant.
Further Complainant argues that Respondent is using Complainant’s mark
and Complainant’s flower logo prominently on its website which may cause Internet
users to believe they are on a website that is owned by Complainant. Complainant further alleges that Respondent
is selling ICQ numbers through its website as well. Complainant contends that Respondent’s use of
the disputed domain name to compete directly with Complainant while also using
Complainant’s marks on Respondent’s website is evidence that Respondent lacks
rights and legitimate interests in the <icqshop.us> domain name.
The Panel finds that Respondent’s use of the disputed domain name to offer
competing communications services and to sell services under Complainant’s mark
is not a use in connection with a bona
fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iv). See Computerized
Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003)
(“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products
that compete with Complainant’s goods does not constitute a bona fide offering
of goods and services.”); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that
the respondent was not using the domain name within the parameters of UDRP ¶
4(c)(i) or (iii) because the respondent used the domain name to take advantage
of the complainant's mark by diverting Internet users to a competing commercial
site); see also Kmart of
Mich., Inc. v. Cone, FA 655014
(Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to
pass itself of as the complainant was not a bona fide offering of goods
or services pursuant to UDRP ¶ 4(c)(i), or a
legitimate noncommercial or fair use pursuant to UDRP ¶ 4(c)(iii) when the
respondent used the disputed domain name to present users with a website that
was nearly identical to the complainant’s website).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration
and Use in Bad Faith
Complainant contends that Respondent is using the disputed domain name to promote and advertise online communication services in competition with Complainant. The Panel finds that Respondent is diverting Internet users seeking Complainant’s online communications services to Respondent’s competing website and that such use is evidence of Respondent’s bad faith registration and use of the <icqshop.us> domain name under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to [UDRP] ¶ 4(b)(iii).”); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to UDRP ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Complainant argues that Respondent is benefiting commercially from use of Complainant’s ICQ mark. Complainant contends that Respondent sells ICQ numbers on Respondent’s website for as much as $1,000. Further, Complainant argues that Respondent is using Complainant’s mark and logo on its website to create the impression that Respondent is either affiliated with or sponsored by Complainant. The Panel finds that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv) where it offers competing services, sale of services, and uses Complainant’s mark and logo prominently on its website. See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to [UDRP] ¶ 4(b)(iv).”); see also Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <icqshop.us> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: July 16, 2070
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