WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
America Online, Inc. v. Xianfeng Fu
Case No. D2000-1374
1. The Parties
Complainant is America Online, Inc. 22000 AOL Way, Dulles, Virginia, USA, 20166.
Respondent is Xienfeng Fu, Chengdu City Jinniu Road, Yingmenkou 45 Guomsodasha 13-5, Chengdu, Chengdu 610000, China.
2. The Domain Names and Registrar
The domain names at issue (the Domain Names) are "icq520.com" and "icq502.com". The registrar of the Domain Names is BulkRegister.com, Inc., 7 East Redwood Street, Third Floor, Baltimore, MD 21202 US.
3. Procedural History
On October 11, 2000, Complainant filed a complaint [hereinafter the Complaint] with the WIPO Arbitration and Mediation Center [hereinafter the Center], receipt of said Complaint being acknowledged by the Center in a letter to the Complainant dated October 13, 2000. On October 17, 2000, the Center informed the registrar, Bulkregister.com, Inc., that the Complaint had been submitted to the Center regarding the Domain Name.
The Center then proceeded to verify that the complaint satisfied the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy [hereinafter referred to as the ICANN Rules and the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy [hereinafter referred to as the WIPO Rules], including the payment of the requisite fees. The verification of compliance with the formal requirements was completed in the affirmative on October 18, 2000.
The Panel has reviewed the documentary evidence provided by the parties and the Center and agrees with the Centerís assessment that the Complaint complies with the formal requirements of the ICANN Rules and the WIPO Rules.
In a letter dated October 18, 2000, the Center informed the Respondent of the commencement of the proceedings as of October 18, 2000, and of the necessity of responding to the Complaint within 20 days. Evidence provided by the Center supports the finding that the Center acted diligently in its attempts to inform the Respondent of the proceedings.
In a letter dated November 8, 2000, the Center informed the Respondent that he was in default pursuant to the ICANN Rules and the WIPO Rules and that an administrative panel would be appointed based on the number of panelists designated by the Complainant. The Panel believes it was constituted in compliance with the ICANN Rules and the WIPO Rules and has also issued a Statement of Acceptance and Declaration of Impartiality and Independence.
The Panel has received no further submissions from either party since its formation.
The Panel is obliged to issue a decision on or prior to December 3, 2000, in the English language.
4. Factual Background
The Complainant is a legal person incorporated under the laws of Delaware with principle place of business in Virginia.
Nothing is known as to the activities of the Respondent.
The Complainant is the owner of some 21 trademark registrations throughout the world, including the USA and China, for the mark ICQ. Additionally, the Complainant is the owner of numerous trademarks, service marks and trade names that include the mark ICQ. The Complainant also owns and operates a web-site at the web address "icq.com" as a portal for its ICQ services.
As early as 1996, the Complainant and its predecessor in interest adopted and began using many of the ICQ marks in connection with an online service which allows users to meet and communicate through the ICQ service. The ICQ service now has over 100 Million subscribers worldwide.
According to the Whois database the Respondent registered the Domain Names with the Registrar on May 26, 2000.
5. Partiesí Contentions
At paragraph 12(8) to the Complaint the Complainant maintains that given the substantial advertising expenditures and sales, the ICQ marks have become well known and famous among members of the public.
Additionally, at paragraph 12(10) to the Complaint the Complainant maintains that the Domain Names are confusingly similar with the Complainantís registered trademarks.
The Complainant continues at paragraph 12(11) to the Complaint by alleging that the Respondent registered and used the Domain Names in bad faith to capitalise and profit from the famous marks.
Furthermore, at paragraph 12(12) to the Complaint the Complainant maintains that the Respondent has no legitimate rights or interests in the Domain Names.
The Complainant maintains at paragraph 12(12)(e) to the Complaint that the Respondent has notice of the Complainant given that he references the Complainantís ICQ service on his web-site.
The Respondent failed to file a response with the Center within the foreseen delays and has failed to file a response since.
6. Discussion and Findings
Referring to paragraph 14 of the ICANN Rules, in the absence of a response to a complainantís allegations by the respondent, the Panel is to consider those claims in the light of the unchallenged evidence submitted by the Complainant. However, the Panel cannot decide in the Complainantís favor solely given the Respondentís default but is entitled to draw, and does, such inferences as it feels just from the Respondentís failure to respond.
Pursuant to the Uniform Domain Name Dispute Resolution Policy [hereinafter the ICANN Policy] the Complainant must convince the Panel of three elements if it wishes to have the Domain Names transferred. It is incumbent on the Complainant to show:
i) that the Domain Names are identical or confusingly similar to a trademark in which the complainant holds rights;
ii) that the Respondent has no legitimate rights or interests in the Domain Names; and
iii) that the Domain Names were registered and used in bad faith.
These three elements are considered below.
Identical or Confusingly Similar to Trademark
The Complainant provided evidence to the effect that a large number of U.S. and foreign registrations (including China) have been made for the "ICQ" trademark and a number of variations formed through the concatenation of the mark ICQ with a number of other words, including "games", "phones", "mail", "search" and "radio".
In general it can be said that there is no set standard which may be used for finding confusion between similar trademarks. A finding of confusion depends on the assessment of all surrounding circumstances. Other WIPO panelists have found on a number of occasions that combinations of trademarks with other words or numbers are confusing (see amongst many others AT&T Corp. v. Tala Alamuddin, Case No. D2000-0249, Caterpillar Inc. v. Roam the Planet, Ltd., Case No. D2000-0275, shopping24 Gesellschaft für multimediale Anwendungen mbH v. Christian Rommel, Case No. D2000-0508, Yahoo! Inc. and GeoCities v. Cupcakes, Cupcake city, Cupcake Confidential, Cupcake-Party, Cupcake Parade, and John Zuccarini, Case No. D2000-0777). The general thrust of these cases is that the distinctive part of the domain name in question includes the complainantís mark and the addition of other words is insufficient to avoid confusion.
The Panel is of the opinion that the Complainant has provided sufficient unchallenged evidence to allow conclusion to be drawn that the trademark ICQ has become well known, if not famous, and therefore, notwithstanding the fact that the Domain Names have been formed by adding the suffixes "502" and "520" to the trademark, the Panel is of the opinion that this does little to reduce the potential for confusion, and therefore the Domain Names are for all intents and purposes identical or confusingly similar to the registered trademarks. The Panel is therefore of the opinion that the Complainant has met the burden of proof as established by paragraph 4(a)(i) of the ICANN Policy.
No Rights or Interests
Paragraph 4(a)(ii) of the ICANN Policy inquires as to whether or not the respondent has any rights or legitimate interests vested in the Domain Name. Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of such rights or legitimate interests: (i) use of, or preparations to use, the Domain Name in connection with a bona fide offering of goods or services; (ii) the fact that the Respondent has commonly been known by the Domain Names; or (iii) legitimate non-commercial or fair use of the Domain Names.
No evidence was provided by the Respondent to dispute the Complainantís contention that the Respondent possesses no rights to the Domain Names. In this regard the Panel is of the opinion that the Respondent has failed to establish a legitimate right or interest under paragraph 4(c)(ii) and (iii) in that there is no evidence to support a finding that the Respondent is commonly known by the Domain Names nor is there any evidence that the Respondent has a legitimate non-commercial or fair use of the Domain Names. Additionally, the Panel finds that: the Respondent is not a licensee of Complainant, nor has he received any permission or consent to use the trademark ICQ; the Complainant has prior rights in that mark which precede Respondentís registration of the Domain Names; and the Respondent is not (either as an individual, business or other organization) commonly known by the name ICQ502 or ICQ520.
The Panel is also of the opinion that the Respondent has no legitimate right or interest under paragraph 4(c)(i), i.e. that the Respondent has not shown use, or preparations to use, the Domain Names in connection with a bona fide offering of goods or services. In the Panelís opinion it would be unconscionable to find that a bona fide offering of services in a respondentís operation of web-site using a domain name which is confusingly similar to the complainantís mark and for the same business. In this regard, the Panel refers to the decision in America Online Inc. v. Shenzhen JZT Computer Software Co. Ltd, Case No. D2000-0809, where the panel found that the respondentís operation of web-site offering essentially the same services as the complainant and displaying the complainantís mark was insufficient for a finding of bona fide offering of goods or services.
Furthermore, the Panel finds it appropriate in this regard to draw an adverse inference from the Respondentís failure to reply to the Complaint and detail any legitimate rights or interests he may have in the Domain Names of the type defined in paragraph 4(c) of the ICANN Policy.
Pursuant to paragraph 4(a)(iii) of the ICANN Policy it is incumbent on the Complainant to prove on the balance that the Respondent has registered and is using the Domain Names in Bad Faith. Paragraph 4(b) of the ICANN Policy provides a number of circumstances which, if found to be present, are evidence of the registration and use of a domain name in bad faith. In particular, paragraph 4(b)(iv) of the ICANN Policy holds that evidence of bad faith is provided when, by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site.
The Complainant has provided unchallenged evidence that the Respondent offers the same chat services via his web-site as the Complainant. The Complainant has also provided evidence that the Respondent displayed the ICQ mark on its web-site. The Panel is therefore of the opinion that the only conclusion that can be arrived at is that the Respondent was intentionally attempting to attract Internet users to his web-site for commercial gain by creating a likelihood of confusion with the Complainantís mark.
The Panel is also of the opinion that the ICQ mark is so obviously connected with the Complainant and its products that the use of the Domain Names by the Respondent, who has no connection with the Complainant, suggests opportunistic bad faith (see e.g. Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net Case No. D2000-0226 and Veuve Cliquot Ponsardin, Maison Fondťe en 1772 v. The Polygenix Group Co., Case No. D2000-0163).
For the foregoing reasons, the Panel concludes:
- that the Domain Names registered by the Respondent are confusingly similar to the trademarks to which the Complainant has rights;
- that the Respondent has no rights or legitimate interests in respect of the Domain Names; and
- that the Domain Names have been registered and are being used by the Respondent in bad faith.
Accordingly, the Panel finds that the Complaint should be allowed and the Domain Names "icq520.com" and "icq502.com" be transferred to the Complainant and so directs the Registrar Network Solutions, Inc., to do so forthwith.
Hugues G. Richard
Dated: December 11, 2000