WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

America Online, Inc. v. Friendly Giants

Case No. D2000-1301

 

1. The Parties

The Complainant: America Online, Inc., 22000 AOL Way, Dulles, Virginia 20166, United States of America.

The Respondent: Friendly Giants, Adelphi Mill, Grimshaw Lane, Bollington, Cheshire, SK10 5JB, United Kingdom. Administrative and billing contact for the Domain Name: Lisa Metcalf.

The domain name was registered on March 30, 2000.

 

2. The Domain Name and Registrar

The domain name in issue is <wapicq.net>, registered by Network Solutions, Inc., 505 Huntmar Park Drive, Herndon VA 20170, United States of America.

 

3. Procedural History

(1) The Complaint in Case D2000-1301 was filed on October 2, 2000.

(2) The WIPO Arbitration and Mediation Center has found that:

- The Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules for the Dispute Resolution Policy;

- Payment for filing was properly made;

- The Complaint complies with the formal requirements;

- The Complaint was properly notified in accordance with the Rules, paragraph 2.a.;

- A Response to the Complaint has not been filed;

- The Respondent was appropriately served with a Notice of Default; and that

- The Administrative Panel was properly constituted.

As Panelist, I accept these findings.

(3) As Panelist, I submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

(4) There have been neither further submissions nor communications from the Complainant and Respondent, or their representatives, after the appointment of the Panel.

(5) The date scheduled for issuance of a decision is: November 14, 2000.

(6) No extensions have been granted or orders issued in advance of this decision.

(7) The language of the proceedings is English.

 

4. Factual Background

The Complainant, America Online, Inc, is the owner of the ICQ service, a huge instant messaging service that has millions of users. The Complainant is the owner of at least 21 trademark registrations worldwide for the mark ICQ, and has pending trademark applications in at least fifty other countries. It is the owner of numerous trademarks, service marks, and trade names that include the mark ICQ, e.g., ICQ Games, ICQ Phone, ICQmail, ICQ Search, and ICQ Radio. It operates the ICQ service primarily from the website found at <icq.com>.

According to Network Solutions, Inc.ís Whois database, the Respondent in this administrative proceeding is Friendly Giants of the address given above. No Response was filed and so no further information is known about the Respondent.

 

5. Partiesí Contentions

The Complainant asserts:

- The Respondent's <wapicq.net> domain name is confusingly similar to the Complainant's ICQ marks.

- The Respondent has no rights or legitimate interest in the <wapicq.net> domain name.

- The Respondent registered <wapicq.net> and is using it in bad faith, as evidenced by (1) registering the domain name long after the Complainant registered its ICQ marks and acquired a reputation in them; (2) by failing to reply to a request to transfer the domain name to the Complainant after being requested to do so; (3) by using the domain name in respect of an online site that promotes and offers "Games, Desktop Toys and Web Aware Applications for the Internet, Mobile Phones, Digital TV and Handheld Devices"; and (4) by the Respondentís failing to refer to the Complainantís marks on its web site.

- And that accordingly the Panel should order that <wapicq> be transferred to the Complainant.

The Respondent has filed no Response.

 

6. Discussion and Findings

Paragraph 4.a. of the Uniform Domain Name Dispute Resolution Policy ("the UDRP") requires the Complainant to make out three elements:

A. The Complainant has rights in a trade or service mark, with which Respondentís domain name is identical or confusingly similar (paragraph 4.a.(i)); and

B. The Respondent has no rights or legitimate interests in respect of the domain name (paragraph 4.a.(ii)); and

C. The Respondent registered and is using the domain name in bad faith (paragraph 4.a.(iii)).

A. The Complainant has rights in a trade or service mark, with which Respondentís domain name is identical or confusingly similar

ICQ was one of the earliest online "chat" services, and the Complainant and its predecessors-in-interest to the service have built it into one of the largest online services of its type in the world. It has over a hundred million users worldwide. The Complainant has registered an extensive portfolio of trade marks worldwide, for the word mark "ICQ" in classes 38 and 42. Countries of current registration include Australia, Austria, Benelux, Chile, Denmark, Finland, France, Germany, Iceland, Israel, South Korea, Mexico, New Zealand, Norway, Panama, Portugal, Slovenia, Spain, Sweden, and Switzerland. There is also an extensive collection of trade mark applications currently under consideration in over fifty jurisdictions. It also hold marks using "ICQ" in conjunction with other words, such as "ICQ Radio", "ICQ Games", etc. Collectively I shall refer to all of these registrations and applications as the "Complainantís marks". The ownership of these marks is not disputed, and therefore this Panel holds that that first requirement of paragraph 4.a.(i) is made out. The Complainant clearly has rights in trade marks sufficient to ground this action.

The second requirement of this paragraph is that the domain name in issue is identical or confusingly similar to the Complainantís marks. On this issue, the Complainant asserts that the <wapicq.net> domain name is confusingly similar to its marks. The Complainant makes no further argument beyond this assertion. Prior to the assertion of confusing similarity, the Complainant makes some factual assertions about the reputation built in the Complainantís marks, and the associations present in the public mind as a consequence of the Complainantís marketing, promotion, and so forth. These factual assertions bolster the claim of confusing similarity by establishing that there is a reputation in the marks in the mind of the public. However the Complainantís bald assertion that the domain name is confusingly similar -- without further argument demonstrating why this is so -- is not as specific as might be wished, and in a contested case might have lead to a different conclusion.

However, the Respondent filed no Response, and so there is no argument from it on this point. This is not a judicial proceeding bound by the civil procedure laws of an adversarial system. Thus I am free to consider reasonable arguments that could be presented for the Respondent, and I am not bound to find for the Complainant simply because no Response is filed. However in this case there is little that one could say that could rebut the Complainantís assertion that confusing similarity exists in this case. It might be argued that the addition of the prefix "WAP" to the mark is sufficient to render it significantly different from the Complainantís marks, and thereby establish that there is no risk of confusion. However, "WAP" is a commonly used, and well-known, acronym for "Wireless Application Protocol", a protocol used to link TCP|IP-based landline services to a wireless environment. As such, the concatenation of "WAP" and "ICQ" is very likely to be read as indicating a wireless form of the ICQ service. Therefore there is substantial likelihood of confusion occurring, and there is no doubt that the domain name is confusingly similar to the Complainantís marks.

I conclude therefore that the Complainant has satisfied paragraph 4.a.(i) of the UDRP.

B. The Respondent has no rights or legitimate interests in respect of the domain name

For this element that Respondent must establish rights or a legitimate interest in the domain name in issue. Since there was no Response filed by the Respondent, again the Panel is confronted with the issue of whether to award a summary transfer to the Complainant, or to consider whether there are plausible arguments in favour of the Respondent. In this case, however, either alternative leads to a clear conclusion. Unlike domain names that are generic, descriptive, or lack distinctiveness, few arguments can be presented here in favour of the Respondentís position based simply on the character of the domain name. The name is obviously the concatenation of "WAP" and "ICQ", and as such gives rise to no concerns about the likelihood of the Respondent having a legitimate claim to the domain name. Absent any evidence from the Respondent establishing its rights or legitimate interests that it may have in the name, I have no hesitation in concluding that the Respondent has no rights or legitimate interest.

I conclude that the Complainant has satisfied paragraph 4.a.(ii) of the UDRP.

C. The Respondent registered and is using the domain name in bad faith

For paragraph 4(a)(iii) to apply, the Complainant must demonstrate the conjunctive requirements that the Respondent registered the domain name in bad faith and continues to use it in bad faith.

On the initial question of whether there was bad faith registration, the domain name was registered on March 30, 2000. The Complainantís ICQ service began in 1996, and its marks were applied for in 1998 and registered in 1999. Furthermore, the name "ICQ" is extremely well-known in the computer community. For these reasons it is extremely unlikely that the registration could have been in good faith. The Respondent has provided no evidence rebutting the Complainantís assertions, and I therefore conclude that the registration was in bad faith

There is evidence that the Respondent has directed the domain name to a site that is branded ĎFriendly Giantsí which advertises "Games, Desktop Toys and Web Aware Applications for the Internet, Mobile Phones, Digital TV and Handheld Devices". There is, therefore, clear evidence of ongoing bad faith use, and I conclude that the Respondent has continued to use in bad faith.

I conclude that the Complainant has satisfied paragraph 4(a)(iii) of the UDRP.

 

7. Decision

The Complainant has satisfied all of the elements of paragraph 4.a. of the Uniform Domain Name Dispute Resolution Policy.

Pursuant to Rule 15 of the Rules for the Uniform Domain Name Dispute Resolution Policy, the requested remedy is granted.

I hereby order that the domain name <wapicq.net> be transferred forthwith to the Complainant.

 


 

Dan Hunter
Sole Panelist

Dated: November 12, 2000