WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
America Online, Inc. v. Cyber Network LLP
Case No. D2000-0977
1. The Parties
The Complainant is America Online, Inc., a corporation organized under the laws of the State of Delaware, United States of America, having its principal place of business at 22000 AOL Way, Dulles, Virginia, United States of America.
The Respondent is Cyber Network LLC, an entity having an address at 373 Brooks Ave. NE, Atlanta, Georgia, United States of America.
2. The Domain Name(s) and Registrar(s)
The domain name at issue is <icq2me.com>, which domain name is registered with Network Solutions, Inc., based in Herndon, Virginia, United States of America.
3. Procedural History
A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on August 8, 2000, and the signed original together with four copies was received on August 10, 2000. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated August 15, 2000.
On August 16, 2000, a Request for Registrar Verification was transmitted to the registrar, Network Solutions, Inc. ("NSI") requesting it to: (1) confirm that the domain name at in issue is registered with NSI; (2) confirm that the person identified as the Respondent is the current registrant of the domain name; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the registrar’s Whois database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact; (4) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in effect; (5) indicate the current status of the domain name.
On August 21, 2000, NSI confirmed by reply e-mail that the domain name at issue is registered with NSI, is currently in active status, and that the Respondent is the current registrant of the name. The registrar also forwarded the requested Whois details, and confirmed that the Policy is in effect.
The WIPO Center determined that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"), the Uniform Rules, and the Supplemental Rules. The required fees for a sole Panelist were paid on time and in the required amount by the Complainant.
No formal deficiencies having been recorded, on August 23, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, NSI and ICANN), setting a deadline of September 11, 2000, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by e-mail to the e-mail addresses indicated in the Complaint and specified in NSI’s confirmation. In addition, the complaint was sent by express courier to the postal address given. Having reviewed the communications records in the case file, the Administrative Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."
On September 15, 2000, not having received any response, the WIPO Center sent the parties a formal Notification of Respondent Default.
On September 22, 2000, in view of the Complainant's designation of a single Panelist, the WIPO Center appointed M. Scott Donahey to serve as sole Panelist.
4. Factual Background
Complainant has registered the mark "ICQ" in connection with telecommunications services, computer operating programs, and computer services in ten countries world wide and has pending trademark applications in at least fifty other countries, including the United States.
Complainant has used the ICQ mark in connection with such goods and services since at least as early as November, 1996.
The ICQ mark is used extensively on Complainant's portal web site located at www.icq.com.
Complainant has invested substantial sums of money in developing and marketing its services. ICQ is the world's largest online communications community, with more than fifty million subscribers, and many millions of dollars have been spent in connection with advertising and promoting the mark.
On January 11, 2000, Respondent registered the domain name <icq2me.com>.
Respondent has used the domain name to develop a web site that allows Internet users to meet and communicate with each other.
Complainant has sent Respondent a letter requesting transfer of the domain name at issue.
5. Parties’ Contentions
Complainant contends that Respondent has registered as a domain name a mark which is confusingly similar to the trade mark and service mark registered and used by Complainant, that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.
Respondent has not contested the allegations of the Complaint.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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."
Since both the Complainant and Respondent are domiciled in the United States, and since United States’ courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) that 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) that the Respondent has no legitimate interests in respect of the domain name; and,
3) the domain name has been registered and is being used in bad faith.
The panel finds that the domain name at issue <icq2me.com> is confusingly similar to the service mark in which the Complainant has rights. InfoSpace.com, Inc. v. Delighters, Inc. d/b/a Joe's Internet Café, ICANN Case No. D2000-0068 (<myinfospace.com> found confusingly similar to INFOSPACE).
Complainant has alleged and Respondent has failed to deny that Respondent has no legitimate interests in respect of the domain name at issue. Alcoholics Anonymous World Services, Inc. v. Raymond, WIPO Case No. D2000-007; Bronson Plc v. Unimetal Sanayai ve Tic. A.S., WIPO Case No. D2000-0011.
Complainant has alleged and the Panel finds that Respondent's use of the domain name at issue to resolve to a web site where services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site. This constitutes evidence of bad faith registration and use under the Policy. Policy, Paragraph 4(b)(iv). InfoSpace.com, Inc. v. Hari Prakash, ICANN Case No. D2000-0076.
For all of the foregoing reasons, the Panel decides that the domain name registered by Respondent is confusingly similar to the trademark and service mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name at issue, and that the Respondent's domain name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4,i of the Policy, the Panel requires that the registration of the domain name <icq2me.com> be transferred to the Complainant.
M. Scott Donahey
Dated: September 29, 2000