WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
America Online, Inc. v. Kandl Co, Ltd.
Case No. D2000-1695
1. The Parties
1.1 The Complainant is America Online, Inc., a Delaware corporation with its principal place of business at 22000 AOL Way, Dulles, Virginia 20166, United States of America.
1.2 The Respondent is Kandl Co, Ltd., of No. 13 Beping 4th Street, Taichung, Taiwan, Province of China.
2. The Domain Name and Registrar
2.1 The domain name upon which this Complaint is based is <needicq.com> The registrar of the domain name as at the date of the Complaint is TuCows.com, Inc, ("TCI").
3. Procedural History
3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 (the "Policy"), in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on October 24, 1999 (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as of December 1, 1999 (the "Supplemental Rules").
3.2 The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by email on December 5, 2000, and in hard copy on December 7, 2000. The fees prescribed under the Supplemental Rules have been paid by the Complainant. The Complaint stated that a copy of the Complaint had been sent or transmitted to the Respondent in accordance with paragraph 2(b) of the Rules and that a copy of the Complaint had been sent or transmitted to the Registrar of the domain name in dispute, TCI.
3.3 On December 6, 2000, the Center sent the Complainant an Acknowledgment of Receipt of Complaint.
3.4 The Center sent a Request for Registrar Verification to TCI on December 7, 2000, by email. TCI responded to the Centerís request by email on December 13, 2000, stating:
(a) that at the time of sending the email on December 13, 2000, TCI had not yet received a copy of the Complaint;
(b) that TCI was the registrar for the domain name in dispute;
(c) that the Respondent was the current registrant of the domain name in dispute;
(d) that the domain name <needicq.com> was currently "on hold" within TCIís system, which did not affect the functionality of the website but ensured that no changes of Registrar or ownership could occur for the duration of the dispute;
(e) the Respondentís contact details; and
(f) that the Policy was applicable to the dispute as per section 7 of the Registration Agreement.
3.5 The Panel notes that in its Reply to the Request for Registrar Verification, TCI states that it had not received a copy of the Complaint from the Complainant, as at December 13, 2000. However, paragraph 18 of the Complaint states:
"A copy of this Complaint, has been sent or transmitted to Tucows on
December 5, 2000, via email."
In the absence of any other relevant evidence, the Panel is of the view that although the Complainant may have sent a copy of the Complaint to an email address which it took to be that of TCI on December 5, 2000, TCI, for whatever reason, did not receive that email. The Panel notes, however, that the Center emailed details of the Complaint to both TCI and ICANN on December 18, 2000. For the purposes of paragraph 10 of the Rules, the Panel is satisfied that no unfairness to the Respondent resulted from the fact that TCI may not have received full details of the Complaint until December 18, 2000.
3.6 The Center sent the Notification of Complaint and Commencement of Administrative Proceeding on December 18, 2000, to the Respondent by post/courier and email, and to the Complainant by email.
3.7 A Notification of Respondent Default was sent by the Center to the Respondent and the Complainant by email on January 9, 2001. This notified the Respondent that it had failed to comply with the relevant deadline for the submission of its Response in the domain name dispute. Although the Notification of Complaint and Commencement of Administrative Proceeding made specific reference to the 20 calendar day period within which the Respondent was entitled to submit a Response to the Complaint, no Response has been received from the Respondent at any time prior to the Panel commencing its deliberations.
3.8 The Center sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the Respondent and the Complainantís representative by email on January 29, 2001.
3.9 The Center sent a transmission of case file to the Panel by email on January 29, 2001. The documentation was received in hard copy by the Panel on February 2, 2001, in Sydney, Australia.
3.10 All other procedural requirements appear to have been satisfied.
4. Factual Background
4.1 Activities of the Complainant
The following information is asserted as fact in the Complaint and remains uncontested.
The Complainantís principal activities involve offering computer online services and other Internet-related services. At least as early as 1996, the Complainant began using its numerous trademarks, service marks and trade names in connection with an online service - the ICQ service - that allows Internet users to meet and communicate online.
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 trade marks, service marks and trade names.
4.2 The Complainantís trade marks
The Complainant is the owner of at least 21 trademark registrations worldwide for the trade mark "ICQ", including registrations in Australia, Austria, Benelux, Chile, China, Denmark, Finland, France, Germany, Iceland, Israel, South Korea, Mexico, New Zealand, Norway, Panama, Portugal, Slovenia, Spain, Sweden and Switzerland. The Complainant also has pending trademark applications in at least fifty other countries including the United States.
The Complainant is the owner of numerous trademarks, service marks and trade names that include the ICQ trade mark, for example, ICQ Games, ICQ Phone, ICQmail, ICQ Search, and ICQ Radio (the "ICQ Marks"). The Complainant also uses the mark ICQ.COM as the domain name for its portal web site for the ICQ service.
The Complainant has invested substantial sums of money in developing and marketing its services. Because of these substantial advertising expenditures and sales, the distinctive ICQ marks have become well-known and famous among members of the purchasing public.
4.3 Activities of the Respondent
As stated above, no Response to the Complaint has been filed by the Respondent. No information has been made available to the Panel concerning the activities of the Respondent.
5. The Complainantís contentions in the Complaint
5.1 The Complaint asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.
5.2 In reference to the element in paragraph 4(a)(i) of the Policy, the Complaint asserts that the disputed domain name, which the Respondent has registered, is confusingly similar to the ICQ Marks in which the Complainant has rights, and that the Respondent is using the disputed domain name in an effort to confuse consumers. The Complaint further states that the Respondentís use of the disputed domain name is particularly confusing because it is being used in connection with a web site that makes prominent use of the ICQ trade mark and provides links to competing web sites and the official ICQ.COM web site.
5.3 In reference to the element in paragraph 4(a)(ii) of the Policy, the Complaint asserts that the Respondent has no rights or legitimate interests in the disputed domain name. However, the Complaint makes no further reference to the element in paragraph 4(a)(ii) of the Policy and does not expand on this assertion.
5.4 In reference to the requirements of paragraph 4(a)(iii) of the Policy, the Complaint asserts that the Respondent has registered and is using the domain name in dispute in bad faith.
In support of this assertion, the Complaint states the following:
(a) the Respondent registered and used the disputed domain name in bad faith to capitalize and profit from the famous mark ICQ and the goodwill the Complainant has built up in its ICQ mark;
(b) the Respondent registered the disputed domain name many years after the Complainantís adoption and first use of the ICQ Marks;
(c) the Respondentís bad faith use of the disputed domain name is further evidenced by its prominent use of the ICQ mark at the needicq.com web site which is likely to lead consumers to falsely believe that the Complainant endorses or is affiliated with the Respondent or its web site;
(d) the Respondentís bad faith use of the disputed domain name is demonstrated by the Respondentís inclusion of links to various commercial web sites, including the Respondentís own commercial web site, pchome.com.tw, at the needicq.com web site, demonstrating the Respondentís intent to profit from the famous ICQ mark;
(e) In numerous similar ICANN proceedings, the arbitration Panel has determined that the Respondentís actions constitute a bad faith registration and use of the ICQ Mark.
5.5 The Complaint asserts that the Respondent cannot claim that it made a legitimate, non-commercial or fair use of the domain name in dispute.
6. Discussion and Panel Findings
6.1 This section is structured by reference to the elements required by paragraph 4(a) of the Policy. In order to be successful, the Complainant has the burden of proving, on the balance of probabilities, that all three elements are present.
6.2 Domain Name identical or confusingly similar to Complainantís trade mark
The domain name in dispute is <needicq.com>. The Complainant has trade mark registrations in numerous countries around the world for "ICQ".
The domain name in dispute and the Complainantís trade mark are not identical, and the issue is therefore whether the domain name and the mark are confusingly similar.
As far as a comparison between the disputed domain name and the Complainantís trade mark "ICQ" is concerned, the Panel agrees with the decision in America Online Inc. v. Shenzen JZT Computer Software Co. Ltd WIPO Case No. D2000-0809, in respect of the domain names gameicq.com and gameicq.net. In that decision, the learned Panelist stated:
"The addition of the word Ďgameí does nothing to deflect the impact on the viewer of the mark ĎICQíÖThe Internet user could well be lulled into thinking that the Complainant was selling video games under its mark ĎICQí - a mark with worldwide connotations."
Similarly, in this case, the addition of the verb "need" to the letters "ICQ" in the disputed domain name has, in the Panelís view, minimal impact on what the viewer focuses on, namely, the word "ICQ". In fact, in the Panelís opinion, the intention of the Respondent in preceding the word "ICQ" with the verb "need" and registering the resulting domain name was to increase the impact of the "ICQ" part of the domain name: the domain name in dispute almost reads as a statement or a question. The mere addition of "need" at the start of the Respondent's domain name is not sufficient to distinguish it from the trade mark of the Complainant. In general this Panelís view is that the addition of a common verb, or any other non-distinctive word for that matter, to an otherwise well known mark is likely to produce a combination that remains at least confusingly similar to the well known mark.
The Panel can envisage no reason whatsoever why the Respondent would choose the word "ICQ" in a domain name it has registered, other than through a desire to cause confusion between the domain name or web site and the Complainantís well-known trade mark. In the panelís view, the word "ICQ" was clearly chosen by the Respondent to cause Internet users to believe that the Complainant endorses or is associated with the Respondentís web site. The Panelís view is that the disputed domain name is confusingly similar to the Complainantís trade mark and finds that the Complainant has proven paragraph 4(a)(i) of the Policy.
6.3 The Respondent has no rights or legitimate interests in the Domain Name
As noted above, whilst the Complaint asserts that the Respondent has no rights or legitimate interests in the disputed domain name, no further statements are made
by the Respondent, nor any evidence provided, to back up this assertion.
Notwithstanding this, the Respondent has asserted no rights or legitimate interests in the disputed domain name, and the Panel cannot presently conceive of any legally sound basis on which any such assertion might be made.
Paragraph 4 (c) of the Policy lists a number of circumstances which, if proven to exist by the Respondent, can be taken to demonstrate a Respondentís rights or legitimate interests in the domain name. Certainly there is no evidence whatsoever before the Panel that any of the situations described in paragraph 4(c) of the Policy apply in the case of the Respondent.
Despite only a bare assertion before the Panel, absent any countervailing evidence or assertion the Panel is prepared to accept that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has proven paragraph 4(a)(ii) of the Policy.
6.4 Domain Name has been registered and is being used in bad faith
The Panel notes that paragraph 4(a)(iii) of the Policy requires both registration in bad faith and use in bad faith. Paragraph 4(b) of the Policy provides:
"The following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith".
In this case, TCI has confirmed that although the domain name <needicq.com> is currently "on hold" within TCIís system, this does not affect the functionality of the website. Furthermore, the Complaint makes several assertions in respect of the web site <www.needicq.com>.
The Panel has made several unsuccessful attempts to access the above website. However, at Annex G of the hard copy of the Complaint, print outs appear of the "Respondentís Infringing Web Site". Web pages have been printed out from a web site, the URL of which in the address bar is< http://www.needicq.com/en-icq.htm> . The Panel is satisfied that these web pages have been printed out from the web site corresponding to the disputed domain name, and that the Respondent has used the disputed domain name, although it may not be using it at present.
6.5 In order to show bad faith registration by the Respondent, the Complainant makes a number of assertions, at paragraph 12 (a) to (g) of the Complaint: it contends that the Respondentís bad faith registration and use of the domain name is evidenced by the fact that the domain name was registered many years after the Complainantís adoption and first use of the ICQ Marks; and the Complainant also contends that the Respondentís bad faith use of the domain name is evidenced by its prominent use of the ICQ mark at the <www.needicq.com website>.
6.6 The Panel accepts the above assertions made in the Complaint, and considers that the Respondent has registered and used the domain name in bad faith. Paragraph 4(b) of the Policy states:
"Öthe following circumstancesÖif found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:Ö
(iv) 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 complainantís mark as to the source, sponsorship, affiliation, or endorsement of your web site or location of a product or service on your web site or location."
In the Panelís opinion, the Respondent registered the domain name with the intention of creating a web site or web sites corresponding to the domain name, to attract Internet users for commercial gain to the website by creating a likelihood of confusion with the Complainantís trade mark.
6.7 The Panel is of the view that the domain name in dispute was registered and was being used in bad faith by the Respondent at least at the time of the Complaint. Accordingly, the Panel finds that the Complainant has proven paragraph 4(a)(iii) of the Policy.
7.1 The Panel has found that all of the requirements of paragraph 4(a) of the Policy have been proven by the Complainant. Accordingly, and for the purposes of paragraph 3(c) of the Policy, the Panel orders that the domain name <needicq.com> be transferred by TCI to the Complainant, America Online, Inc.
Philip N. Argy
Dated: February 26, 2001