WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

America Online, Inc. v. Vadim Eremeev

Case No. D2001-0003

 

1. The Parties

The Complainant is America Online, Inc (AOL), 22000 AOL Way, Dulles, Virginia 20166, USA, represented by Mr. James R. Davis, II of Arent Fox Kintner Plotkin & Kahn, Washington, DC, USA ("Complainant").

The Respondent is Mr. Vadim Eremeev, an individual with address Leni Golikova 31-3-62, Saint Petersburg, spb 198255, the Russian Federation ("Respondent").

 

2. The Domain Name and Registrar

The dispute concerns the domain name <icqplus.org>.

The Registrar is BulkRegister.com, Baltimore, MD, USA.

 

3. Procedural History

The WIPO Arbitration and Mediation Center ("the Center") received the Complainantís Complaint in electronic form on January 2, 2001 and in hard copy on January 4, 2001.

The Center verified that the Complaint was filed in accordance with the requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules for the Policy ("the Rules"), and the Supplemental Rules for the Policy ("the Supplemental Rules").

Complainant made the required payment to the Center.

On January 10, 2001, the Center transmitted via e-mail to the Registrar a request for registrar verification in connection with this case, and received immediately via e-mail the Registrarís Verification Response, confirming that (1) BulkRegister.com is the Registrar of the Domain Name, (2) Mr. Vadim Eremeev (the Respondent) is the registrant, (3) Mr. Vadim Eremeev is the Administrative Contact and Mr. Pavel Pavlov is the Technical Contact, (4) the UDRP applies to the Domain Name, and (5) the Domain Name is in "Registrar LOCK" status.

On January 11, 2001, the Center transmitted a Notification of Complaint and Commencement of Administrative Proceeding, together with a copy of the Complaint, to the Respondent via e-mail and via post/courier to the address identified in the Registrar verification response. The Center advised that (1) the Respondentís Response was due by January 30, 2001 (2) in the event of default the Center would still appoint a Panel to review the facts of the dispute and to decide the case, (3) the Panel may draw such inferences from the Respondentís default as it considers appropriate, (4) the Complainant had elected for the matter to be decided by a single panelist.

The Respondent filed the Response via e-mail on January 25, 2001. A hardcopy of the Response was received by the Center on January 30, 2001.

On January 31, 2001, in view of the Complainantís designation of a single panelist the Center invited Mr. P-E Petter Rindforth to serve as a panelist.

Having received Mr. Rindforthís Statement of Acceptance and Declaration of Impartiality and Independence, the Center, on February 2, 2001, transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Rindforth was formally appointed as the sole Panelist. The Projected Decision Date was February 15, 2001. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules.

Accordingly, the Administrative Panel shall issue its Decision based on the Complaint, the Response, the Policy, the Rules, and the Supplemental Rules. The case before the Panel was conducted in the English language.

 

4. Factual Background

The Complainant is the owner of a number of trademark registrations worldwide for the mark ICQ, and has provided evidence in the form of copies of Certificates of Registration from the United States, Australia, Austria, Australia, Benelux, European Community, Denmark, Finland, France, Germany, Iceland, Israel, South Korea, Mexico, New Zealand, Norway, Panama, Portugal, Slovenia, Spain, Sweden, and Switzerland. According to the US Certificate, the trademark ICQ has been used by the Complainant since 1996, in respect of various computer and Internet related goods and services in Classes 9, 35, 38 and 42, especially telecommunications and computer on-line services.

The Complainant uses its ICQ mark alone as well as in combination with generic terms such as ICQphone, ICQ Radio, ICQmail and ICQ Surf (Annex C of the Complaint). The Complainant also uses the mark ICQ.COM as the domain name for its portal Web site for the ICQ service.

The ICQ marks are especially used in connection with an online service that allows Internet users to meet and communicate through the ICQ service. The marks have been used continuously and extensively in interstate and international commerce in connection with the advertising and sale of these Internet-related services, and the Complainant has invested substantial sums of money in developing and marketing its services.

The Complainant has over one hundred million subscribers worldwide and is therefore claimed to be the worldís largest online communications community, known also through substantial advertising.

The Respondent is a developer of a freeware software product called ICQ Plus. ICQ Plus "allows to change the appearance of ICQ" and is a service, which expands and complements the ICQ services. The first version of this software product was published on the Internet on March 3, 1999.

 

5. Partiesí Contentions

A. Complainant

The Complainant has spent a substantial amount of money in advertising the ICQ marks and services, and the general public has come to associate these names and marks with services of a high and uniform quality.

The Respondent registered the Domain Name in February 2000, long after the Complainantís adoption and first use of the ICQ Marks, and long after the ICQ Marks became well-known and famous. The Respondent has used the Domain Name in connection with a commercial web site called ICQ Plus that provides software services intended to interact with the ICQ service. The site also contains commercial advertisements and links to various other web sites that contain advertisements for various Internet-related services (Annex G of the Complaint).

The Domain Name is confusingly similar to the ICQ Marks, and is particularly confusing because it is being used in connection with a web site that makes prominent use of the ICQ mark and provides links to competing web sites and the official ICQ web site.

The Respondent has registered and used the Domain Name in bad faith in order to capitalize and profit from the famous mark ICQ.

The Respondent has no rights or legitimate interests in the Domain Name.

On March 31, 2000, the counsel for the Complainant sent the Respondent a letter, explaining Complainantís rights in its ICQ marks and requested the Respondent to cease its infringing use of the ICQ mark. The Respondent did not reply.

Respondentís prominent use of the ICQ mark at the web site called ICQ Plus aggravates Respondentís infringement and is likely to lead consumers to falsely believe that AOL endorses or is affiliated with Respondent or its web site. The use is further an effort to confuse consumers and divert them to Respondentís web site. Respondentís registration and use of the Domain Name in this manner demonstrates its bad faith attempt to profit from the goodwill that the Complainant has created in its ICQ mark.

Respondent cannot, in good faith, claim that he had no knowledge of the Complainantís trade mark rights and/or that he made a legitimate noncommercial or fair use of the Domain Name.

Accordingly, the Complainant requests the Panel to transfer the Domain Name to the Complainant.

B. Respondent

The Respondent does not contest that he has knowledge about the Complainantís trade mark rights to ICQ, and confirms that the Complainantís services under the said trade mark has become a standard in Internet communications.

The name of the Respondentís software product was chosen by the Respondent in order to point the subject-matter and data domain, related to this software product, which is a common way for developers to advertise their services.

The Respondent has used the ICQ Plus name more than a year before the registration of the Domain Name. The information on the service was located on different public sites on the Internet, such as www.xoom.com. Because of the limitations in rules of such sites and aiming to give to consumers more qualitative support the Respondent decided to register his own domain name.

The Domain Name was registered in order to provide an understandable conformity between the name of the Respondent's software product and the name of the site on the Internet, and at the same time avoid any confusion on the association between the Respondent and the official services of the Complainant. In order to indicate the non-commercial orientation of the Respondentís services, the .org TLD was used as a contrast to the Complainantís official web site at "icq.com".

The Respondent further denies that the Domain Name is used in bad faith, and refers to the following as proof of use in good faith:

- A survey conducted by CNET indicates that 94% of the voters liked the ICQ Plus product (Annex A of the Response)

- All services provided on the Respondentís web site are absolutely free

- Respondent has included a link to the official ICQ web site <icq.com>.

- Links to the other sites were included by the Respondent free-of-charge for owners of these sites because of the common subject-matter with the Respondentís site.

- As a reply to the Complainantís letter of March 31, 2000, the Respondent has added to the content on his site reference to ICQ / AOL as the owners of the trade mark ICQ.

The Respondent also points out the fact that the Complainant has no trade mark registrations for ICQ in Russia, the home country of the Respondent, and has no registrations for ICQPLUS in any country. The Respondent registered the Domain Name several months prior to the Complainantís registration of the ICQ trade mark in United States.

Finally, the Respondent points out that prior to the registration of the Domain Name, there existed (and still exist) several other similar domain names not owned by the Complainant, such as <icqx.com>, <icqplus.com>, <icqplus.net> (Annex C of the Response).

 

6. Discussion and Findings

According to Paragraph 4 (a) of the Policy, the Complainant must prove each of the following:

(i) that the Respondentís Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

There is no doubt that the Respondentís Domain Name is confusingly similar to the world famous trade mark ICQ, owned by the Complainant.

It is true that the Complainant has not registered the trademark ICQ Plus. However, the Complainant has shown a practice to use its registered mark in combination with various descriptive words indicating additional services under and in connection to its ICQ trademark, such as ICQphone, ICQ Radio, ICQmail and ICQ Surf.

In this respect, ICQ Plus is likely to be regarded by the public as another official ICQ service and trademark. Furthermore, the Respondent has not denied that the Domain Name is a combination of the Complainantsís mark and the word PLUS.

As to the question whether the Respondent has rights or legitimate interests in respect of the Domain Name, the Panel concludes the following:

The Respondent has no rights to use the Complainantís trademark, and is not an authorized agent or licensee of the Complainantís products, services or trademarks.

Can the Respondent be said to have other grounds of legitimate interests in the Domain Name? Paragraph 4 (c) of the Policy states, in particular but without limitation, circumstances that Ė if found by the Panel Ė shall demonstrate the Respondents rights or legitimate interests to the Domain Name.

The Complainant states that the Respondent has used the Domain Name in connection with a commercial web site, and that the site contains commercial advertisements and links. The Respondent states that all services provided on the Respondentís web site are "absolutely free". The Panel concludes that the links on the site, although in the form of banners, are noncommercial and directed to other developers of so called "skins". The Panel is further Ė without any certain proof of the contrary Ė prepared to accept the Respondentís statement that these links are provided free of charge. The Complainant has failed to prove that the Respondentís web site is for commercial use.

The fact that the Respondent has a link on the site to the Complainantís official site and that Ė at least as a reaction of the letter sent from the counsel of the Complainant and before the filing of the Complaint Ė the Respondent has added a notice on the site regarding ICQ Inc / AOLís ownership of the trade mark ICQ as well as a note stating that the site is not affiliated with the Complainant, contradicts the Complainantís statement that the use of the Domain Name would lead to confusions among consumers.

The Respondent has developed a free software product, connected to the services of ICQ, and the only commercial link seems to be the one pointing at the official web site of the Complainant.

Considering both partiesí statements and the evidence filed, the Panel therefore concludes that the Complainant has failed to prove that Respondent is not making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark/s of the Complainant.

The third requirement for the Complainant to prove is whether the Domain Name has been registered and is being used in bad faith. Paragraph 4 (b) of the Policy regulates the kind of evidence and circumstances, "in particular but without limitation" that shall be evidence of the registration and use of a domain name in bad faith.

The Panel herewith concludes that the Complainant has failed to prove that

- the Respondent registered the Domain Name primarily for the purpose of transferring the Domain Name to the Complainant or a competitor for a valuable consideration in excess of the Respondentís out-of-pocket costs directly related to the Domain Name, as nothing of that kind has been discussed between the parties

- the Respondent has registered the Domain Name in order to prevent the Complainant from reflecting the ICQ mark in a corresponding domain name (the Complainantís official site for the trademark is "icq.com")

- the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor Ė the Respondent is not proved to be a competitor of the Complainant, as the Respondent has no commercial interests in the business or Domain Name, but rather seems to be a fan of the services of the Complainant

Regarding the use, it is noted that the Respondent did not properly reply to the

March 31, 2000 letter from the Complainantís counsel. Instead, the Respondent added some references on his web site regarding the ownership of the trademark ICQ. While, from this date, the Respondents use of the Domain Name can not be claimed to have been conducted in good faith, it is still not sufficiently proved that the use was for commercial gain.

The Panel therefore concludes that the Domain Name was not registered in bad faith, and that it is questionable whether the Domain Name has been used in bad faith after March 31, 2000.

 

7. Decision

The Panel concludes (a) that the Domain Name <icqplus.org> is confusingly similar to the Complainantís registered trademark ICQ, (b) that the Complainant has failed to prove that the Respondent has no legitimate interest in the Domain Name, and (c) that the Complainant has failed to prove that Respondent has registered the Domain Name in bad faith.

Therefore, pursuant to paragraphs 4 of the Policy and 15 of the Rules, the Panel denies the Complainantís request to transfer the disputed Domain Name to the Complainant America Online, Inc.

 


 

P-E Petter Rindforth
Sole Panelist

Dated: February 15, 2001