WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

America Online, Inc. v. Greg Bloom

Case No. D2000-1362

 

1. The Parties

(a) Complainant is America Online, Inc., a Delaware corporation with its principal place of business at 22000 AOL Way, Dulles, Virginia 20166, U.S.A. ("AOL").

(b) The Complainantís authorized representative in this administrative proceeding is James R. Davis, II, Arent Fox Kintner Plotkin & Kahn, 1050 Connecticut Avenue, NW, Washington, DC 20036, U.S.A.

(c) Respondent, according to Network Solutions, Inc.ís Whois database, is Greg Bloom, 4837 Rockwood, Garfield Heights, OH 44125, U.S.A. ("Bloom").

 

2. Domain Name and Registrar

(a) The domain name in issue is "icqadultchat.com".

(b) The registrar for the domain name at issue is Network Solutions, Inc. ("Network Solutions").

 

3. Procedural History

(a) On October 10, 2000, the Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned names and Numbers ("ICANN") on August 26, 1999, (the "Policy") and hard copy on October 12, 2000.

(b) The Center verified that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy approved by ICANN on October 24, 1999, (the "Rules") and WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

(c) Payment in the required amount has been made by the Complainant to the Center.

(d) A copy of the Complaint, together with the cover sheet as prescribed by the Supplemental Rules, was sent or transmitted to both the Respondent and to Network Solutions, Inc. via certified mail, return receipt requested in compliance with the Rules.

(e) October 27, 2000, the Center transmitted to Network Solutions a request for registrar verification in connection with this case.

(f) On October 29, 2000, the Center received Network Solutionsí Verification Response, (1) confirming that Network Solutions received a copy of the Complaint sent by the Complainant in accordance with the Supplemental Rules, (2) confirming that the domain name stated above is registered with Network Solutions, (3) confirming that the Respondent is the current registrant of the domain name (4) providing full contact details that are available in Network Solutionsí Whois database for the domain name registrant, technical contact and administrative contact for the domain name stated above, (5) confirming that the Network Solutionsí 5.0 Service Agreement is in effect with respect to the domain name, and (6) stating that the domain name is in "Active" status.

(g) On November 13, 2000, the Center transmitted via post/courier and e-mail Notification of Complaint and Commencement of the Administrative Proceeding, together with a copy of the Complaint, to the Respondent and via e-mail to the Complainant. The Center advised that (1) the response was due by December 2, 2000, (2) in the event of default the Center would appoint a Panel to review the facts and to decide the case, (3) the Panel may draw such inferences from Respondentís default as it considers appropriate, (4) AOL had elected for the matter to be decided by a single panelist who would be appointed within five days of the date the response is due, (5) the fees for the administrative proceeding will be paid in their entirety by AOL, (6) the Panel will decide the case within 14 days of its appointment, and (7) the Center can be contacted at stated postal and email addresses, at stated telephone number, and at stated fax number.

(h) On December 5, 2000, the Center transmitted via post/courier and e-mail Notification of Respondent Default to the Respondent and via e-mail to the Complainant advising that Respondent failed to comply with the deadline indicated in the Notification of Complaint and Commencement of Administrative Proceeding for submission of its Response in the above-referenced matter and advising that the Center shall proceed to appoint an Administrative Panel based on the number of panelists designated by the complainant.

(i) On December 27, 2000, the Center transmitted to the Complainant and to the Respondent via email, Notification of Appointment of Administrative Panel and Projected Decision Date. The notification advised that Mr. Gaynell C. Methvin had been appointed as the single panelist, and the decision is due January 10, 2001.

(j) On December 27, 2000, the Center transmitted the case file to the appointed panelist, Mr. Methvin.

 

4. Factual Background and Partiesí Contentions

a. The Trademarks

The Complaint (∂ 12) is based on various trademarks AOL registered in the U.S. Patent and Trademark Office and elsewhere.

[12] 1 (Footnote 1) AOL is the owner of at least 21 trademark registrations worldwide for the mark ICQ, including registrations in Australia, Austria, Benelux, Chile, Denmark, Finland, France, Germany, Iceland, Israel, South Korea, Mexico, New Zealand, Norway, Panama, Portugal, Slovenia, Spain, Sweden, and Switzerland, (copies of registration certificates are attached to the Complaint as Annex B). In addition, AOL has pending trademark applications in at least fifty other countries, including federal trademark application Ser. No. 75-381,414 in the United States. The mark ICQ has been used since at least as early as November 1996, in connection with:

"Telecommunications services, namely, services relating to electronic transmission of data, images and documents via computer terminals, electronic storage and retrieval of data and documents, electronic mail services, facsimile transmission, personal communication services, paging services, and messaging services" and

"Computer operating programs that may be downloaded from a computer information network; computer software and prerecorded computer programs for accessing computer networks and computer systems comprising computer hardware and computer software for electronic communications that may be downloaded from a computer information network; and computer software for accessing online electronic diaries, online databases, websites, online chatrooms, and electronic yellow pages that may be downloaded from a computer information network" and

"Computer services, namely, providing multiple user access to computer information networks and online communication networks; providing on-line services, namely, electronic yellow pages, and providing general interest information via computer networks."

[12] 2. AOL 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, ICQ Radio (collectively the ICQ Marks). See Annex C for examples of ICQís use of its ICQ Marks. AOL also uses the mark "icq.com" as the domain name for its portal Web site for the ICQ service. The ICQ Marks are used extensively at this portal Web site, which is a significant method of promoting the ICQ service.

b. The Complaint

AOL in its Complaint in support of its position asserts the following:

[12] 3. Long prior to Respondentís registration of the domain name at issue in this proceeding, and at least as early as 1996, AOL and its predecessor-in-interest adopted and began using many of its ICQ Marks in connection with computer online services and other Internet-related services. Specifically, the ICQ Marks are used in connection with an online service that allows Internet users to meet and communicate through the ICQ service. The distinctive ICQ Marks have been used continuously and extensively in interstate and international commerce in connection with the advertising and sale of these Internet-related services.

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

[12] 5. With over one hundred million subscribers worldwide, ICQ is the worldís largest online communications community and each year millions of ICQ customers worldwide obtain services offered under the ICQ Marks; millions more are exposed to said marks through advertising and promotion (See Annex E for June 2000, CNET article).

[12] 6. The ICQ Marks have been and continue to be widely publicized through substantial advertising throughout the United States and the world. Many millions of dollars have been spent in connection with such advertising, which has been disseminated through network and cable television programs, radio broadcasts, and in print media including newspapers and periodicals.

[12] 7. Sales of services under the ICQ Marks have amounted to many millions of dollars. As a result, the general public has come to associate these names and marks with services of a high and uniform quality.

[12] 8. Because of these substantial advertising expenditures and sales, the distinctive ICQ Marks have become well-known and famous among members of the purchasing public.

[12] 9. On August 18, 2000, long after AOLís adoption and first use of the ICQ Marks, and long after the ICQ Marks became well-known and famous, Respondent registered the domain name "icqadultchat.com" (the ICQ Domain Name") and began using it in connection with a commercial Web site that displays adult and pornographic content (See Annex G).

[12] 10. The ICQ Domain Name is confusingly similar to the ICQ Marks, including the famous mark ICQ.

[12] 11. Respondent registered and used the ICQ Domain Name in bad faith to capitalize and profit from the famous mark ICQ and the goodwill AOL has built up in its ICQ mark.

[12] 12. Respondent has no rights or legitimate interests in respect to the ICQ Domain Name. The following is evidence of Respondentís bad faith registration and use of the domain name:

(a) Respondentís bad faith registration of the domain name is evidenced by the fact that Respondent registered the ICQ Domain Name many years after AOLís adoption and first use of its ICQ Marks (copies of the Whois records for the ICQ Domain Name is included as Annex D).

(b) On September 28, 2000, Counsel for AOL sent Respondent a letter, explaining AOLís rights in its ICQ marks and requesting that the domain name "icqadultchat.com" be transferred to AOL. Copy of AOLís letter is attached as Annex F.

(c) In response to that letter, Respondent called AOLís counsel and stated that he would not transfer the domain name unless AOL pays Respondent $2,000. Respondentís failure to cease his unauthorized use of the ICQ Marks, and his offer to sell the ICQ Domain Name for significantly more than the registration fee, demonstrate that Respondent registered and used the ICQ Domain Name in bad faith to profit from the goodwill AOL has created in its ICQ mark.

(d) Respondentís bad faith use of the ICQ Domain Name is further evidenced by his use of the domain name in connection with an adult and pornographic Web site that contains links to numerous commercial sites that are not affiliated with or endorsed by AOL. See Annex G. Respondent provides the commercial links as part of numerous affiliate programs that pay Respondent for each new Internet user that visits the host companyís Web site. Respondentís registration and use of the ICQ Domain Name in this commercial manner demonstrates his bad faith attempt to profit from the goodwill that AOL has created in its ICQ mark.

(e) Based upon the correspondence and conversation between AOL and Respondent, the references to the ICQ service at Respondentís Web site, and the fame of the mark ICQ, Respondent cannot, in good faith, claim that it had no knowledge of AOLís rights in the mark ICQ. Furthermore, Respondent cannot claim, in good faith, that it made a legitimate noncommercial or fair use of the domain name.

c. Remedies Requested

As for relief, AOL requests at Paragraph [13]:

In accordance with Paragraph 4(b)(i) of the Policy, for the reasons described in Section V above, the Complainant requests the Administrative Panel appointed in this administrative proceeding issue a decision that "icqadultchat.com" be transferred to Complainant.

d. Respondentís Answer

Respondent has filed no answer, or any other document, with the Center.

 

5. Discussion and Findings

Paragraph 4 of the Policy directs that AOL must prove, with respect to the domain name in issue, each of the following:

(i) The domain name in issue is identical or confusingly similar to the ICQ trademark, and

(ii) Respondent has no rights or legitimate interests in respect of the domain name, and

(iii) The domain name has been registered and is being used in bad faith.

Paragraph 4.b of the Policy sets out four illustrative circumstances, which for purposes of Paragraph 4(a)(iii) above shall be evidence of the registration and use of a domain name in bad faith.

Paragraph 4.c of the Policy sets out three illustrative circumstances which, if proved by respondent, shall demonstrate respondentís rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii) above.

a. Identity or Confusing Similarity

AOL urges, and has the burden of proving, that the domain name in dispute is either identical to, or confusingly similar to, the ICQ trademarks. Respondentís failure to respond does not relieve AOL of its burden of proof on this element or on either of the two elements of Paragraph 4(a) of the Policy. However, Respondentís failure to deny any of AOLís averments permits this panel to take AOLís averments as true and to draw appropriate inferences.

On its face, the domain name in issue, "icqadultchat.com" incorporates AOLís domain name "icq.com". The addition of the words "adultchat" does not change the AOL marks and/or domain name "icq.com" in such a way as to prevent confusion between the domain name at issue and AOL marks and domain name. In light of the foregoing and the truth and controlling nature of the facts set forth in the Complaint at Paragraph 12, Subparagraphs 1 to 10, the domain name in issue is found to be confusingly similar to the ICQ marks.

b. Rights or Legitimate Interests

On this record, no challenge has been leveled with respect to (1) the validity of any ICQ trademarks or service marks, (2) AOLís rights in those marks with respect to AOL services and goods, (3) the global fame and goodwill associated with those marks, or (4) any fact averred by AOL as to promotion of the marks, use of the marks, and total sales of services and goods under the marks. Accordingly, such facts are found to be true.

No challenge has been leveled with respect to AOLís averments as to registrantís conduct.

In light of the foregoing, it is found that this record demonstrates that Respondent has no rights or legitimate interests vis-a-vis "icqadultchat.com".

c. Registration and Use in Bad Faith

Registration of the domain name in issue in bad faith is a matter of the appropriate inferences to draw from circumstantial evidence. Each is to be proved by AOL.

The facts asserted by AOL in support of its position that Respondentís registration was in bad faith are found in the Complaint at Paragraph 12, Subparagraphs 11 and 12. These facts are found to be true and show inter alia (i) that Respondentís registration came many years after AOL established rights in its ICQ marks and (ii) Respondent offered to sell the domain name in issue to AOL and, therefore, provide ample convincing evidence that Respondent has registered the domain name "icqadultchat.com" in bad faith.

d. Paragraph 4.c Factors

With respect to the domain name in issue, by failing to respond to the Complaint, Respondent has failed to prove any of the three circumstances set out in Paragraph 4.c of the Policy, viz.:

(i) before any notice to Respondent of the dispute, Respondentís use of or preparations to use the domain name were in connection with a bona fide offering of goods or services,

(ii) Respondent or a related entity has been commonly known by the domain name, and

(iii) Respondent is making legitimate noncommercial or fair use of the domain name in issue, "without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."

As averred by AOL and properly inferred from the undisputed facts as to Respondentís conduct, each of these three factors must be resolved in favor of AOL.

 

6. Decision

The panel has jurisdiction of this dispute. Respondent has received notice of the commencement of this proceeding, the Policy, the Complaint, and the consequences of Respondentís default. Respondent has been afforded due process.

With respect to the request for transfer of the domain name at issue, the Panel decides that AOL has carried its burden of proving (a) the domain name in issue here is identical to or confusingly similar to the ICQ Marks, (b) Respondent has no rights and no legitimate interests in respect of the domain name in issue, and (c) the domain name in issue has been registered in bad faith by Respondent.

Accordingly, the Panel requires that the registration of the domain name "icqadultchat.com" be transferred to AOL.

 


 

Gaynell C. Methvin
Sole Panelist

Dated: January 10, 2001

 


 

Footnote:

1. Each number corresponds to the paragraph number in the complaint.