National Arbitration Forum

 

DECISION

 

America Online, Inc. v. Daniel Cadosch Delmar d/b/a Viplevel, Inc.

Claim Number: FA0510000586860

 

PARTIES

Complainant is America Online, Inc. (“Complainant”), represented by James R. Davis, of Arent Fox PLLC, 1050 Connecticut Avenue, NW, Washington, DC 20036.  Respondent is Daniel Cadosch Delmar d/b/a Viplevel, Inc. (“Respondent”), 6770 Indian Creek Drive #15L, Miami Beach, Florida 33141.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <icqrealty.com>, registered with Direct Information Pvt. Ltd., d/b/a Directi.com.

 

PANEL

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 Irving H. Perluss (Retired) is the Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 25, 2005; the National Arbitration Forum received a hard copy of the Complaint on October 28, 2005.

 

On October 27, 2005, Direct Information Pvt. Ltd., d/b/a Directi.com confirmed by e-mail to the National Arbitration Forum that the <icqrealty.com> domain name is registered with Direct Information Pvt. Ltd., d/b/a Directi.com and that the Respondent is the current registrant of the name.  Direct Information Pvt. Ltd., d/b/a Directi.com has verified that Respondent is bound by the Direct Information Pvt. Ltd., d/b/a Directi.com 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 October 28, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 17, 2005 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@icqrealty.com by e-mail.

 

A timely Response was received and determined to be complete on November 17, 2005.

On November 23, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Irving H. Perluss (Retired) as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A.     Complainant

 

            1.         Complainant America Online, Inc. (“AOL”) owns the mark ICQ and numerous trademark registrations worldwide for that mark, including a registration in the United States, No. 2411657, filed on October 29, 1997, and registered on December 12, 2000.  The ICQ registrations cover, among other goods and services, the following:  online directory of businesses and people in Class 35; providing financial information via electric means in Class 36; telecommunications services, namely services relating to electronic transmission of data, images and documents via computer terminals, electronic mail services in Class 38; and providing information in the field of general interest news via computer networks in Class 42.

 

            2.         AOL uses its mark also in connection with other words and terms to provide various services, for example, ICQ PHONE and ICQ MAIL.

 

            3.         At least five years prior to Respondent’s registration of the disputed domain name on July 23, 2002, AOL and its predecessors-in-interest adopted and began using the ICQ marks in connection with software, computer and Internet-related communications and goods and services.  The name as derived in 1996 as a shorthand of the phrase “I Seek You.”  Since their first adoption, the distinctive ICQ marks have been used continuously and extensively in interstate and international commerce in connection with the advertising and sale of AOL’s goods and services.

 

            4.         AOL has invested substantial sums of money in developing and marketing its services.

 

            5.         Each year millions of customers worldwide obtain goods and services offered under the ICQ marks; millions more are exposed to said marks through advertising and promotion.

 

            6.         Through substantial advertising expenditures and sales, the distinctive ICQ marks have become well-known and famous among members of the purchasing public.

 

            7.         Long after AOL’s adoption and first use of its ICQ marks, and long after those marks became well-known an famous, Respondent registered the domain name <icqrealty.com> for the bad faith purpose of profiting from the goodwill AOL has created in its ICQ marks.  Specifically, Respondent registered the domain name and began using it with a commercial Website that used the slogan “I Seek You Realty” and marks like ICQREALTY and ICQExpress.  The mark ICQ was coined by AOL as a shorthand of the phrase “I Seek You,” and AOL owns numerous marks that incorporate ICQ, for example., ICQ MAIL and ICQ PHONE.  Consumers that see the famous and distinctive ICQ marks in the disputed domain name <icqrealty.com> and corresponding Website are likely to believe that AOL endorses or is affiliated with Respondent or its services.  Respondent, therefore, has registered and is using the infringing domain for the sole purpose of confusing and leading unknowing consumers to Respondent’s commercial Website.

 

            8.         The disputed domain name <icqrealty.com> is confusingly similar and nearly identical to the ICQ marks and AOL-owned domain names like <icq.com> and <icqmail.com>.  Respondent is using the famous ICQ mark as a prefix to the generic word “realty.”  AOL uses marks like ICQ MAIL and ICQ PHONE to provide a variety of online services.  The use of a word such as “realty” with a famous mark like ICQ, particularly at a Website that uses the phrase “I Seek You Realty” to provide online services demonstrates that Respondent is attempting to mislead and confuse consumers.

 

            9.         Respondent has no rights or legitimate interests in the disputed domain name.  Respondent, Daniel Cadosch Delmar d/b/a Viplevel, Inc., is not named ICQ or ICQ REALTY, and is not licensed or otherwise legally entitled to use AOL’s trademarks.

 

            10.       Respondent’s bad faith registration of the disputed domain name is evidenced by the fact that the domain was registered on July 23, 2002, many years after the ICQ marks were registered and had become famous and well-known to consumers.

 

            11.       Because of (1) the fame of the ICQ marks; (2) the federal trademark registration for the ICQ mark; (3) Respondent’s admission that he had known about the ICQ service for many years before the domain name <icqrealty.com> was registered; (4) Respondent’s use of the disputed domain name with a Website that uses the phrase “I Seek You Realty”; and (5) Respondent’s subsequent attempt to change the domain site and claim ICQ is his wife’s initials, Respondent cannot in good faith claim that he had no knowledge of AOL’s rights in its famous marks.  Furthermore, Respondent cannot claim in good faith that he made a legitimate noncommercial or fair use of the subject domain, or that Respondent is commonly known as ICQ.

 

B. Respondent

            1.         Internet users are not likely to seek Complainant when they employ the <icqrealty.com> domain name.

 

            2.         The ICQ letters are the initials of Respondent’s wife, Iris C. Quinn.  Accordingly, Respondent is commonly known by the disputed domain name.

 

            3.         The <icqrealty.com> disputed domain name is associated with the legitimate real estate business of Respondent’s wife, Iris C. Quinn.

 

            4.         Since the <icqrealty.com> disputed domain name is associated with the legitimate real estate business of Respondent’s wife, Respondent has not registered or used the disputed domain name in bad faith because it has not targeted or otherwise used the domain name in a manner proscribed by the Policy.

 

            5.         Respondent’s wife’s legitimate intention from the inception has been to promote real estate in south Florida.

 

            6.         Respondent has removed all misleading information from the <icqrealty.com> Website and has posted a disclaimer stating that Respondent is not affiliated in any manner with ICQ.COM or AOL.

 

FINDINGS AND DISCUSSION

Preliminarily, a procedural issue must be resolved.  This is because Respondent has not submitted a hard copy of the Response as required by Rule 5.  It is within the Panel’s discretion, however, whether to accept the response, and it will be accepted and considered.

 

See Strum v. Nordic Net. Exch. AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2000) (“[R]uling a Response inadmissible because of formal deficiencies would be an extreme remedy not consistent with the basic principles of due process . . . .”); J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where Respondent submitted a timely Response electronically, but failed to submit a hard copy of the Response on time, “[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight”).

 

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

 

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;

(2)   the 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.

 

Identical and/or Confusingly Similar

 

Complainant has demonstrated 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 at least 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 name registered by Respondent is confusingly similar to Complainant’s ICQ mark because the domain name incorporates Complainant’s mark in its entirety and deviates from it only by adding the generic word “realty.”

 

Because “ICQ” is the sole distinctive component of the domain, the commercial impression created by these domains is that the service provided at Respondent’s site is provided or endorsed by AOL.  The mere addition of a generic or descriptive word to a registered mark does not alter the confusing similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).  See L.L. Bean, Inc. v. ShopStar Network, 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); Arthur Guinness Son & Co. (Dublin) Ltd. v. Healty/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); 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 Complainant satisfied the requirements of Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Section 4(c) of the Policy states that Respondent may demonstrate his rights and legitimate interest in a disputed domain name by any of the following circumstances, without limitation:

 

i.          before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

 

ii.          you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

 

iii.         you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Respondent has not demonstrated that it falls into any of these categories.

 

With respect to subparagraph (i), Respondent runs afoul of the term “bona fide” because the appropriation of Complainant’s mark to sell real estate cannot be held to be a bona fide offering of  a good or service pursuant to Policy ¶ 4(c)(i).  See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent’ and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); Am. Online, Inc. v. Advanced Membership Servs., Inc., FA 180703 (Nat. Arb. Forum Sept. 26, 2003) (“Respondent’s registration and use of the <gayaol.com> domain name with the intent to divert Internet users to Respondent’s website suggests that Respondent has no rights to or legitimate interests in the disputed domain name pursuant to Policy Paragraph 4(a)(ii).”).

 

Moreover, it cannot be concluded that Respondent was “commonly” known by the disputed domain name so as to come within subparagraph (ii).  See 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 Policy Paragraph 4(c)(ii) does not apply; RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy Paragraph 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”); Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

 

With respect to subparagraph (iii), the Panelist can only conclude that because of his actual and constructive knowledge of Complainant’s marks, Respondent’s primary motivation in registering the domain name was to profit from the confusion that would be generated from its use, his protest to the contrary.  It appears that Respondent is seeking to benefit commercially by diverting unsuspecting Internet users to his Website.  See Vapor Blast Mfg. Co. v. R & S Tech, Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) ( finding that, because Respondent’s sole purpose in selecting the domain names was to cause confusion with Complainant’s website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use); 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).

 

The Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii) in showing that Respondent has no rights or legitimate interest in the domain name.

 

Registration and Use in Bad Faith

 

Respondent, admittedly, had actual knowledge of Respondent’s mark before he registered the disputed domain name.  Section 4(b) of the Policy sets forth certain circumstances, without limitation, that are evidence of registration and use of a domain name in bad faith.  Subparagraph (iv) of Section 4(b) provides as follows:

 

by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product of service on your website or location.

 

The words “source, sponsorship, affiliation, or endorsement,” are particularly apt here.  Inevitably, the Panelist believes that consumers would conclude that the disputed domain name was endorsed and sponsored by Complainant.

 

But, in any event, in addition to the demonstration of bad faith by Respondent’s actual knowledge of Complainant’s marks and by the application of subparagraph (iv) of Section 4(b) of the Policy, there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s famous and distinctive trademark;   this is “constructive bad faith.”[1]

 

In Interstellar Starship Services, Ltd. v. Epix, Inc., (9^th Cir. 1999) 184 F.3d 1107, 1111, it was said:

 

However, ISS became aware of the ‘EPIX’ trademark when it applied for its own registration of ‘EPIX.’  Adopting a designation with knowledge of its trademark status permits a presumption intent to deceive.  See Brookfield, 174 F.3d at 1059 (citing Official Airline Guides, Inc. v. Goss, 6 F.3d 1385 (9^th Cir. 1993)).  In turn, intent to deceive is strong evidence of a likelihood of confusion.  Sleekcraft, 559 F.2d at 354.

 

The Complainant has satisfied the “bad faith” prong of the three requisites for transfer of the disputed domain name.

 

But says Respondent, “I have put a disclaimer on the disputed website.”

 

A disclaimer by Respondent on his Website, however, does not alleviate the problem.  This is because such disclaimers are not sufficient to prevent initial interest confusion.  See Madonna v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith.  First, the disclaimer may be ignored or misunderstood by Internet users.  Second, a disclaimer does nothing to dispel interest confusion that is inevitable from Respondent’s actions.  Such confusion is a basis for finding a violation of Complainant’s rights.” (citing Brookfield Comm., Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036 (9th Cir. 1999)).

 

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 <icqrealty.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Judge Irving H. Perluss (Retired), Panelist
Dated:  December 7, 2005