America Online, Inc. v. Tony Lusk aka
DotComSales Organization
Claim
Number: FA0406000283538
Complainant is America Online, Inc. (“Complainant”),
represented by James R. Davis, II of Arent Fox PLLC, 1050
Connecticut Avenue NW, Washington DC 20036.
Respondent is Tony Lusk a/k/a DotComSales Organization (“Respondent”), 2670 Leafmore Drive SE,
Smyrna, GA 30082-1819.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <icqservice.com>, <icqservices.com>,
<icqnames.com>, <icqmessaging.com>, <icqhosting.com>,
<icqdomains.com>, <icqdomain.com>, <icqdns.com>,
<ezicq.com> and <addicq.com>, registered with Enom,
Inc.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on June 4, 2004; the Forum received a hard copy of the Complaint
on June 7, 2004.
On
June 7, 2004, Enom, Inc. confirmed by e-mail to the Forum that the domain names
<icqservice.com>, <icqservices.com>, <icqnames.com>,
<icqmessaging.com>, <icqhosting.com>, <icqdomains.com>,
<icqdomain.com>, <icqdns.com>, <ezicq.com>
and <addicq.com> are registered with Enom, Inc. and that
Respondent is the current registrant of the domain names. Enom, Inc. has
verified that Respondent is bound by the Enom, 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
June 9, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 29, 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@icqservice.com,
postmaster@icqservices.com, postmaster@icqnames.com,
postmaster@icqmessaging.com, postmaster@icqhosting.com,
postmaster@icqdomains.com, postmaster@icqdomain.com, postmaster@icqdns.com,
postmaster@ezicq.com and postmaster@addicq.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
July 12, 2004, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed the Honorable Charles K. McCotter,
Jr. (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 that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <icqservice.com>,
<icqservices.com>, <icqnames.com>, <icqmessaging.com>,
<icqhosting.com>, <icqdomains.com>, <icqdomain.com>,
<icqdns.com>, <ezicq.com> and <addicq.com>
domain names are confusingly similar to Complainant’s ICQ mark.
2. Respondent does not have any rights or
legitimate interests in the <icqservice.com>, <icqservices.com>,
<icqnames.com>, <icqmessaging.com>, <icqhosting.com>,
<icqdomains.com>, <icqdomain.com>, <icqdns.com>,
<ezicq.com> and <addicq.com> domain names.
3. Respondent registered and used the <icqservice.com>,
<icqservices.com>, <icqnames.com>, <icqmessaging.com>,
<icqhosting.com>, <icqdomains.com>, <icqdomain.com>,
<icqdns.com>, <ezicq.com> and <addicq.com>
domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainants,
America Online, Inc. and ICQ, Inc. (collectively “AOL,” hereinafter
“Complainant”) have been using the ICQ mark as early as November 1996 in
connection with telecommunications services, computer operating programs,
computer software and prerecorded computer programs for assessing computer
networks and computer systems comprising computer hardware and computer
software for electronic communications, computer software for accessing online
electronic diaries, online databases, websites, online chat rooms and other
computer related services.
Complainant is
the owner of numerous trademarks, service marks and trade names including the
ICQ, ICQLoveMatch, ICQDownload, ICQmail and ICQPhone marks. Complainant registered the ICQ mark with the
United States Patent and Trademark Office on October 29, 1997 (Reg. No.
2411657). Since its first adoption in
1996, Complainant has used the ICQ mark continuously and extensively in
interstate and international commerce in connection with the advertising and
sale of goods and services.
Respondent
registered the <icqservice.com>, <icqservices.com>, <icqnames.com>,
<icqmessaging.com>, <icqhosting.com>, <icqdomains.com>,
<icqdomain.com>, <icqdns.com>, <ezicq.com> and
<addicq.com> domain names between October 14, 2002 and December
27, 2003.
Respondent is
using the domain names to promote various online services, including many that
compete directly with Complainant. In
fact, some of the websites prominently display Complainant’s famous ICQ mark.
Additionally,
Respondent has demonstrated a history of registering domain names that infringe upon famous marks, such as
<fordfiestas.com> and <harleybusiness.com>.
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 names 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 names; and
(3) the domain names have been registered and
is being used in bad faith.
Complainant has
established in this proceeding that it has rights in the ICQ mark through
registration with the United States Patent and Trademark Office and by
continuous use of its mark in commerce for the last eight years. 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 domain names
registered by Respondent are confusingly similar to Complainant’s ICQ mark
because the domain names incorporate Complainant’s mark in its entirety and
deviates from it only by adding generic or descriptive words and phrases such
as “domains” “ez” “add” and “service.”
ICQ is the sole distinctive component of the domains and the commercial
impression created by these domains is that the service provided at
Respondent’s sites are provided or endorsed by AOL. The mere addition of a generic or descriptive word to a
registered mark does not negate the confusing similarity of Respondent’s domain
name pursuant to 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 Complainant’s registered mark “LLbean” does not circumvent
Complainant’s rights in the mark nor avoid the confusing similarity aspect of
the ICANN Policy); 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.,
Inc. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the
<westfieldshopping.com> domain name confusingly similar because the
WESTFIELD mark was the dominant element).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
asserts that Respondent has no rights or legitimate interests in the domain
names. Due to Respondent’s failure to
respond to the Complaint, it is assumed that Respondent lacks rights and
legitimate interests in the disputed domain names. The burden shifts to Respondent to show that it does have rights
or legitimate interests once Complainant establishes a prima facie case
pursuant to Policy ¶ 4(a)(ii). See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(holding that where Complainant has asserted that Respondent has no rights or
legitimate interests with respect to the domain name it is incumbent on
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
Complainant that Respondent has no right or legitimate interest is sufficient
to shift the burden of proof to Respondent to demonstrate that such a right or
legitimate interest does exist).
Moreover, the
Panel may accept all reasonable allegations and inferences to the Complaint as
true because Respondent has not submitted a Response. 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 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 Complainant to be deemed true).
Respondent is
using the <icqservice.com>, <icqservices.com>, <icqnames.com>,
<icqmessaging.com>, <icqhosting.com>, <icqdomains.com>,
<icqdomain.com>, <icqdns.com>, <ezicq.com> and
<addicq.com> domain names to redirect Internet users to commercial
websites that not only makes prominent use of Complainant’s ICQ marks, but also
offer online services that are not affiliated with Complainant in any way. Respondent has no legitimate right to misuse
Complainant’s well-known name and ICQ mark in promoting the Internet shopping
services of other third parties.
Respondent’s use of domain names that are confusingly similar to
Complainant’s ICQ mark to redirect Internet users interested in Complainant’s
services to commercial website that display Complainant’s mark and offer
services similar to Complainant’s services is not a use in connection with a
bona fide offering of goods pursuant to Policy ¶ 4(c)(i) and it is not a legitimate
noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii). See Oly Holigan, L.P. v.
Private, FA 95940 (Nat. Arb. Forum Dec. 4, 2000) (finding no rights or
legitimate interests in a misspelled domain name as Respondent was merely using
it to redirect Internet users to, inter alia, an online casino); see
also Nike, Inc. v. Ben Dias, FA 135016 (Nat. Arb Forum Jan. 7, 2001)
(finding no “bona fide” offering of goods or services where Respondent used
Complainant’s mark without authorization to attract Internet users to its
website, which offered both Complainant’s products and those of Complainant’s
competitors).
Moreover,
Respondent has offered no evidence and there is no proof in the record
suggesting that Respondent is commonly known by the <icqservice.com>,
<icqservices.com>, <icqnames.com>, <icqmessaging.com>,
<icqhosting.com>, <icqdomains.com>, <icqdomain.com>,
<icqdns.com>, <ezicq.com> and <addicq.com>
domain names. Thus, Respondent has not
established rights or legitimate interests in the disputed domain name pursuant
to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
where Respondent was not commonly known by the mark and never applied for a
license or permission from Complainant to use the trademarked name); see
also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23,
2001) (finding that Respondent does not have rights in a domain name when
Respondent is not known by the mark).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
intentionally registered domain names that contain in its entirety
Complainant’s well-known mark and did so for Respondent’s commercial gain. Respondent’s domain names divert Internet
users who seek Complainant’s ICQ mark to Respondent’s commercial website
through the use of domain names that are confusingly similar to Complainant’s
mark. Furthermore, Respondent is
unfairly and opportunistically benefiting from the goodwill associated with
Complainant’s ICQ mark. Respondent’s
practice of diversion, motivated by commercial gain, constitutes bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See Bank of America Corp v. Out Island Props., Inc., FA
15431 (Nat. Arb. Forum June 3, 2003) (stating that “[s]ince the disputed domain
names contain entire versions of Complainant’s marks and are used for something
completely unrelated to their descriptive quality, a consumer searching for
complainant would become confused as to Complainant’s affiliation with the
resulting search engine website” in holding that the domain names were
registered and used in bad faith pursuant to Policy ¶ 4(b)(iv)); see also
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 eBay, Inc. v. Progressive Life Awareness Network,
D2001-0068 (WIPO Mar. 16, 2001) (finding bad faith where Respondent is taking
advantage of the recognition that eBay has created for its mark and therefore
profiting by diverting users seeking the eBay website to Respondent’s site).
Additionally,
Respondent’s registration of domain names incorporating Complainant’s
well-known registered mark in its entirety and deviates only with the addition
of a generic or descriptive term, suggests that Respondent knew of
Complainant’s rights in the ICQ mark.
Furthermore, the generic or descriptive term incorporated in the domain
names describes Complainant’s business.
Thus, the Panel finds that Respondent chose the <icqservice.com>,
<icqservices.com>, <icqnames.com>, <icqmessaging.com>,
<icqhosting.com>, <icqdomains.com>, <icqdomain.com>,
<icqdns.com>, <ezicq.com> and <addicq.com>
domain names based on the distinctive and well-known qualities of Complainant’s
mark. 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 Pavillion Agency, Inc. v. Greehnouse
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’”).
Respondent is
using the disputed domain names in connection with commercial websites that
make prominent use of the ICQ mark.
Contrary to the misleading manner in which Respondent uses the ICQ mark
in the domains and websites, Respondent’s online services are not affiliated
with Complainant in any way. Respondent’s
use of the ICQ marks and logos in this manner to route traffic to this site
proves that Respondent has actual knowledge of Complainant’s service and
registered and used the infringing domains to profit from consumer confusion. The Panel finds that, by creating confusion
around Complainant’s mark, Respondent is attempting to disrupt the business of
a competitor. Respondent’s use of
Complainant’s mark is evidence of bad faith registration and use pursuant to Policy
¶ 4(b)(iii). See Exposure v. S. Exposure,
Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in
bad faith by attracting Internet users to a website that competes with
Complainant’s business); see also SR Motorsports v. Rotary Performance,
FA 95859 (Nat. Arb. Forum Jan. 4, 2001) (finding it “obvious” that the domain
names were registered for the primary purpose of disrupting the competitor’s
business when the parties are part of the same, highly specialized field).
Furthermore,
evidence of Respondent’s bad faith use of the domain names is evidenced by
Respondent’s bad faith pattern of registering domain names that infringe upon
famous marks. In addition to this case,
Respondent has registered various domain names that violate third party marks,
revealing Respondent’s disregard for the intellectual property rights of
others. This bad faith pattern violates
¶ 4(b)(ii) of the Policy. See
Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000)
(finding that one instance of registration of several infringing domain names
satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also Armstrong
Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000)
(finding that Respondent violated Policy ¶ 4(b)(ii) by registering multiple
domain names that infringe upon others’ famous and registered trademarks); see
also YAHOO! Inc. v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) (finding
bad faith pattern pursuant to Policy ¶ 4(b)(ii) in Respondent’s registration of
two domain names incorporating Complainant’s YAHOO! Mark).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <icqservice.com>, <icqservices.com>,
<icqnames.com>, <icqmessaging.com>, <icqhosting.com>,
<icqdomains.com>, <icqdomain.com>, <icqdns.com>,
<ezicq.com> and <addicq.com> domain names be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
July 26, 2004
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