America Online, Inc. v. Roush Enterprises
Claim Number: FA0309000193882
Complainant is America Online, Inc., Dulles, VA
(“Complainant”) represented by James R.
Davis, of Arent Fox Kintner Plotkin
& Kahn, PLLC. Respondent is Roush Enterprises, Vancouver, BC,
Canada (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <icq-download.com>,
registered with Tucows, 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.
Judge
Harold Kalina (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on September 10, 2003; the Forum received a hard copy of the
Complaint on September 12, 2003.
On
September 11, 2003, Tucows, Inc. confirmed by e-mail to the Forum that the
domain name <icq-download.com>
is registered with Tucows, Inc. and that Respondent is the current registrant
of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows,
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
September 15, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of October 6, 2003 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-download.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
October 12, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Judge Harold Kalina (Ret.) 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 transfer of the domain name from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <icq-download.com> domain name is confusingly similar to
Complainant’s registered ICQ mark.
2. Respondent does not have any rights or
legitimate interests in the <icq-download.com>
domain name.
3. Respondent registered and used the <icq-download.com> domain name in
bad faith.
B. Respondent did not submit a Response in this
proceeding.
Complainant
holds several trademark registrations for the ICQ mark throughout the world,
including Reg. No. TMA557935 (Canada) and Reg. No. 2,411,657 (United
States). Complainant’s ICQ mark has
been used in commerce since at least 1996 in association with downloadable
computer programs, online informational services, online directory services,
and telecommunications services.
Complainant uses the mark in combination with terms related to its
services, such as ICQdownload, ICQmail, ICQphone, ICQgames, and ICQcommunity.
Complainant
asserts that it has invested substantial sums of money in developing and
marketing its services under the ICQ mark, and that tens of millions of
customers obtain goods and services offered under the mark each year. The ICQ service has been downloaded over
200,000,000 times around the world.
Respondent
registered the <icq-download.com>
domain name on May 3, 2000, and uses it to deceptively direct users to
pornographic websites, unrelated to ICQ.
The web page hosted at the disputed domain name also incorporates the
ICQ mark in its meta-tags so that search engines will direct users to
Respondent’s site when looking to download the ICQ program.
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 its rights in the ICQ mark through registration in Canada and other
countries. Respondent’s domain name
incorporates the entire mark, suffixing it with a hyphen and the word
“download.” Given Complainant’s substantial
online presence, the addition of the word “download” does not materially distinguish
the domain name from Complainant’s mark.
Accordingly, the domain name is confusingly similar to Complainant’s ICQ
mark. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where Respondent’s domain name combines Complainant’s mark with a
generic term that has an obvious relationship to Complainant’s business); 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).
Policy ¶ 4(a)(i)
has been satisfied.
Complainant
asserts that Respondent has no rights or legitimate interests in respect of the
disputed domain name. As Respondent has
not come forward to contest this assertion, the Panel may accept it as
true. See 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”); see also
Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4,
2000) (finding that Respondents’ failure to respond can be construed as an
admission that they have no legitimate interest in the domain names).
The record
indicates that Respondent uses the disputed domain name and meta-tages in the
associated website to lead Internet users to the site and then direct them to
pornographic materials through deceptively labeled links. Such use of Complainant’s mark in the domain
name will not establish a bona fide offering of goods or services nor a
legitimate noncommercial or fair use of the name. See Paws, Inc. v. Zuccarini
a/k/a Country Walk, 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 Microsoft Corp. v.
Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that Respondent’s use of
Complainant’s mark to “define the location of Respondent’s website on the
Internet” and to host a pornographic website was not a legitimate noncommercial
or fair use of the domain name).
As there is no
evidence presented to establish that Respondent is commonly known by the <icq-download.com> domain name,
the Panel concludes that Respondent has no rights or legitimate interests in
respect of the <icq-download.com>
domain name. As such, Policy ¶ 4(a)(ii)
is satisfied.
Complainant’s
ICQ service is well-known throughout the Internet and Respondent’s use of the
mark in its website’s meta-tags confirms that Respondent was personally aware
of Complainant’s service and mark at the time it registered the <icq-download.com> domain
name. Registration and use of a domain
name with actual knowledge of another’s rights in that mark demonstrates bad
faith within the meaning of the Policy.
See 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 Exxon
Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that
Respondent had actual and constructive knowledge of Complainant’s EXXON mark
given the worldwide prominence of the mark and thus Respondent registered the
domain name in bad faith).
By intentionally
using the domain name to misleadingly direct users to pornographic websites,
Respondent has further demonstrated its bad faith in using the name. See
Wells Fargo & Co. v. Party Night Inc. & Carrington, FA 144647 (Nat.
Arb. Forum Mar. 18, 2003) (finding that Respondent’s
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).
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 <icq-download.com>
domain name be TRANSFERRED from
Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated:
October 24, 2003
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