America Online, Inc. v. Aaa
dfda@yahoo.com ddd
Claim
Number: FA0407000296351
Complainant is America Online, Inc.
(“Complainant”), represented by James
R. Davis, of Arent Fox PLLC., 1050 Connecticut Ave. NW, Washington, DC 20036. Respondent is Aaa dfda@yahoo.com ddd (“Respondent”). Respondent’s WHOIS
registration information is listed as ddd, ddd, ddd, dsds, ddd, ddd.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <gameicq.com>, registered with Onlinenic,
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.
Louis
E. Condon as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on July 14, 2004; the Forum received a hard copy of the
Complaint on July 14, 2004.
On
July 15, 2004, Onlinenic, Inc. confirmed by e-mail to the Forum that the domain
name <gameicq.com> is registered with Onlinenic, Inc. and that
Respondent is the current registrant of the name. Onlinenic, Inc. has verified
that Respondent is bound by the Onlinenic, 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
July 19, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 9, 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@gameicq.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
August 13, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Louis E. Condon 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <gameicq.com>
domain name is confusingly similar to Complainant’s ICQ mark.
2. Respondent does not have any rights or
legitimate interests in the <gameicq.com> domain name.
3. Respondent registered and used the <gameicq.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
America Online, Inc., is a leading global provider of computer information
networks and online communications services. Complainant operates the ICQ
online service, a service that is utilized by tens of millions of customers
worldwide.
Complainant
holds a trademark registration with the United States Patent and Trademark
Office (“USPTO”) for the ICQ mark (Reg. No. 2,411,657, issued Dec. 12, 2000).
Complainant also holds numerous trademark registrations for the ICQ family of
marks in foreign countries, including Chile, China, Italy, Israel, Mexico, New
Zealand, and Sweden. Complainant has used the ICQ mark in commerce since 1996
in connection with computer and Internet-related goods and services.
Complainant has invested substantial sums of money in developing and marketing
its services. Thus, the ICQ mark has become well known both within the United
States and worldwide. The ICQ service has been downloaded over 2,000,000,000
times around the world, making it one of the largest online communities in the
world.
Respondent
registered the <gameicq.com> domain name on March 27, 2002.
Respondent is using the domain name to redirect Internet users to its own
commercial website that offers unauthorized ICQ services and ICQ-based products
as well as products and services from Complainant’s competitors.
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 that it has rights in the ICQ mark through registration with the
United States Patent and Trademark Office and through the use of its mark in commerce
for the last six 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).
Respondent’s <gameicq.com>
domain name is confusingly similar to Complainant’s ICQ mark because the
domain name incorporates Complainant’s mark in its entireity and only deviates
with the addition of the generic term “game” and the top-level domain “.com.”
The mere addition of a generic term and a top-level domain name does not negate
the confusing similarity between Respondent’s domain name and Complainant’s
mark pursuant to Policy ¶ 4(a)(i). See 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 Sony
Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (“[n]either
the addition of an ordinary descriptive word . . . nor the
suffix ‘.com’ detract from the overall impression of the dominant part of the
name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is
satisfied); 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); see also Rollerblade, Inc. v. McCrady, D2000-0429
(WIPO June 25, 2000) (finding that the top level of the domain name such as
“.net” or “.com” does not affect the domain name for the purpose of determining
whether it is identical or confusingly similar).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent is
using the <gameicq.com> domain name to divert Internet traffic
intended for Complainant to a website that provides unauthorized ICQ services
and products. Respondent’s use of a domain name confusingly similar to
Complainant’s ICQ mark to redirect Internet users interested in Complainant’s
services and products to a commercial website that offers unauthorized ICQ
services and products is not a use in connection with a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial
or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See U.S.
Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that Respondent’s use of
Complainant’s mark and the goodwill surrounding that mark as a means of attracting
Internet users to an unrelated business was not a bona fide offering of goods
or services); see also MSNBC
Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights
or legitimate interests in the famous MSNBC mark where Respondent attempted to
profit using Complainant’s mark by redirecting Internet traffic to its own
website); see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan.
7, 2002) (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); see also N. Coast
Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000)
(finding no rights or legitimate interests in a domain name that diverted
Internet users to Respondent’s competing website through the use of
Complainant’s mark).
Moreover,
Respondent has offered no evidence and there is no proof in the record
suggesting that Respondent is commonly known by the <gameicq.com> domain
name. Thus, Respondent has not established rights or legitimate interests in
the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc.
v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (“nothing in Respondent’s
WHOIS information implies that Respondent is ‘commonly known by’ the disputed
domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not
apply); 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); see also RMO, Inc. v. Burbidge, FA 96949
(Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require
a showing that one has been commonly known by the domain name prior to
registration of the domain name to prevail").
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent registered the <gameicq.com>
domain name for its own commercial gain.
Respondent’s
domain name diverts Internet users wishing to search under Complainant’s ICQ
mark to Respondent’s commercial website, where Respondent offers unauthorized
ICQ products and services. Respondent’s practice of diversion, motivated by commercial
gain, through the use of a confusingly similar domain name evidences bad faith
registration and use pursuant to Policy ¶ (b)(iv). See 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 State
Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000)
(finding bad faith where Respondent registered the domain name
<bigtex.net> to infringe on Complainant’s goodwill and attract Internet
users to Respondent’s website); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29,
2000) (finding bad faith where the domain name in question is obviously
connected with Complainant’s well-known marks, thus creating a likelihood of
confusion strictly for commercial gain); see also America Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000)
(finding that Respondent intentionally attempted to attract Internet users to
his website for commercial gain by creating a likelihood of confusion with
Complainant’s mark and offering the same chat services via his website as
Complainant).
Furthermore,
Respondent registered the <gameicq.com> domain name for the
primary purpose of disrupting Complainant’s business by redirecting Internet
traffic intended for Complainant to Respondent’s website, which directly
competes with Complainant by offering Complainant’s products and services as
well as products and services from Complainant’s competitors. Registration and
use of a domain name for the primary purpose of disrupting the business of a
competitor is evidence of bad faith registration and use pursuant to Policy ¶
4(b)(iii). See Surface Prot.
Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that,
given the competitive relationship between Complainant and Respondent,
Respondent likely registered the contested domain name with the intent to
disrupt Complainant's business and create user confusion); see also Lubbock Radio Paging v. Venture
Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that
domain names were registered and used in bad faith where Respondent and
Complainant were in the same line of business in the same market area); see also S. 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 Fossil, Inc.
v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the
<fossilwatch.com> domain name from Respondent, a watch dealer not
otherwise authorized to sell Complainant’s goods, to Complainant).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Complainant
having established all three elements required under the ICANN Policy, the
Panel concludes that relief should be GRANTED.
Accordingly, it
is Ordered that the <gameicq.com> domain name be TRANSFERRED
from Respondent to Complainant.
Louis E. Condon, Panelist
Dated:
August 26, 2004
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