WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
America Online, Inc. v. Andy Hind
Case No. D2001-0642
1. The Parties
The complainant is America Online, Inc. of 22000 AOL Way, Dulles, Virginia 20166, United States of America, represented by James R. Davis, II Esq., of Arent Fox Kintner Plotkin & Kahn of Washington, DC., United States of America.
The respondent is Andy Hind of Business & Innovation Centre, Wearfield, Sunderland, Tyne and W SR5 2TA, United Kingdom.
2. The Domain Names and Registrar
This dispute concerns the domain names <icq-hacks.com> <icq-hacks.net> <icq-plus.net> and <map-quest.net>.
The registrar is BulkRegister.com, Inc., of Baltimore, MD, USA.
3. Procedural History
This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").
The Complaint was received by the Center by email on May 10, 2001, and in hardcopy on May 15, 2001. The Complaint was acknowledged on May 14, 2001. That day registration details were sought from the Registrar. On May 18, 2001, the registrar confirmed that the disputed domain names are registered in the name of the Respondent and that the Policy applies. On May 18, 2001, the Center satisfied itself that the complainant had complied with all formal requirements, including payment of the prescribed fee, and printed out a copy of the disputed Webpages. On May 22, 2001, the Center formally notified the respondent by post/courier (with enclosures) fax and email (both without attachments) of the Complaint and of the commencement of this administrative proceeding and sent copies to the Complainant, the Registrar and ICANN.
The last day specified by the Center for a response was June 10, 2001. No response was filed. On June 14, 2001, the Center gave formal notice of the respondentís default.
On June 25, 2001, the Center notified the parties of the appointment of Alan L. Limbury to serve as panelist, Mr. Limbury having submitted a Statement of Acceptance and Declaration of Impartiality and Independence. That day, the Center transmitted the case file to the panel and notified the parties of the projected decision date of July 9, 2001.
The language of the proceeding was English.
The panel is satisfied that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the panel agrees with the Centerís assessment concerning the Complaintís compliance with the formal requirements; the Complaint was properly notified to the respondent in accordance with paragraph 2(a) of the Rules; no Response was filed and the administrative panel was properly constituted.
4. Factual Background
The Complainant (either itself or through affiliated entities) entities owns the trademarks ICQ and MAPQUEST ("the AOL marks") in many countries including U.S. Trademark Registrations 2,411,657 for ICQ and 2,129,378 for MAPQUEST; European Community Trademark Registration E972513 for ICQ and UK Trademark Registration 2193931 for MAPQUEST.
The Complainant also uses the marks <icq.com> and <mapquest.com> in connection with providing services on the Internet. Each year millions of the Complainantís customers worldwide obtain computer and Internet-related goods and services offered under the AOL marks. The AOL marks have become well-known and famous.
On December 1, 2000, the Respondent registered the disputed domain names to use in connection with commercial Web sites.
5. Partiesí Contentions
The disputed domain names are confusingly similar to the AOL Marks. The addition of generic words like "hacks" or "plus" to the ICQ mark, and the use of a hyphen to separate the two syllables of the famous MAPQUEST mark, are insufficient to ensure that consumers will not be confused as to whether the Complainant or its affiliates endorse or operate the respondentís Web sites.
The Respondent has no rights or legitimate interests in respect of the disputed domain names. The respondent is not named ICQ or Mapquest, and the Complainant has not licensed or authorized him to use the famous ICQ or MAPQUEST marks.
The following is evidence that the Respondent registered, used, and continues to use the disputed domain names in bad faith to capitalize on the famous AOL marks and to divert consumers away from the ICQ and Mapquest services:
(a) he registered the disputed domain names many years after the Complainantís adoption and first use of the AOL marks;
(b) he provided a false or outdated address in the Whois records in an attempt to make it more difficult for the Complainant and other trademark owners to contact him regarding the improper and unauthorized use of trademarks: Quixtar Investments, Inc. v. Scott A. Smithberger and QUIXTAR-IBO, WIPO Case No. D2000-0138;
(c) by operating commercial Web sites using the famous AOL marks, he is attempting to profit and capitalize on the goodwill the complainant has created in its famous marks;
(d) he is not using ICQ or Mapquest as acronyms, names, or abbreviations at his commercial Web sites. This demonstrates that he chose to use the disputed domain names solely to draw attention to his Web sites and confuse consumers and profit from the international goodwill the Complainant has developed in its famous marks;
(e) based upon the false contact information provided by the Respondent, the fame of the AOL marks and the fact that the Respondentís commercial Web sites are not affiliated with and do not make reference to the ICQ or Mapquest services, he cannot, in good faith, claim that he had no knowledge of the complainantís rights in the AOL marks. Furthermore, the Respondent cannot claim, in good faith, that he made a legitimate noncommercial or fair use of the disputed domain names or that he is commonly known as ICQ or MAPQUEST.
No response was filed.
6. Discussion and Findings
Failure to file a Response
Failure to file a Response permits the panel to infer that the Respondent does not deny the facts which the Complainant asserts nor the conclusions which the Complainant asserts can be drawn from those facts". (Footnote 1)
To qualify for cancellation or transfer, a Complainant must prove each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Identity or confusing similarity
Essential or virtual identity is sufficient for the purposes of the Policy. (Footnote 2)
The test of confusing similarity under the Policy, unlike trademark infringement or unfair competition cases, is confined to a consideration of the disputed domain name and the trademark.(Footnote 3) Here each disputed domain name incorporates the whole of one of the Complainantís trademarks.
The panel finds the disputed domain names are virtually identical and are confusingly similar to the Complainantís trademarks. The Complainant has established this element.
The Complainant has not authorized the Respondent to use its trademarks nor to register the disputed domain names. The name of the Respondent is not and does not include any part of any of the disputed domain names. The sites established at each of the disputed domain names contain identical messages, but for the domain name. The <icq-hacks.com> site, for example (<icq-hacks.com>) says:
"ICQ Hacks Ė the Hottest Site on the Internet. Free Software, Free Pics, Games, Sport, MoviesÖ" [etc]
"Click here to enter".
It is thus apparent that each site has been designed to attract Internet users because of their familiarity with the AOL marks. The Respondent is trading off the Complainantís goodwill in so doing.
The panel finds the Complainant has established this element. The Respondent has no rights or legitimate interests in the disputed domain names.
Bad faith registration and use
A finding of bad faith may be made where the Respondent "knew or should have known" of the registration and use of the trademark prior to registering the domain name (Footnote 4). Here the content of Respondentís web sites and the simultaneous registration of the domain names show unequivocally that the Respondent must have known of the AOL marks before he registered the domain names.
Accordingly the Complainant has established that the disputed domain names were registered and are being used in bad faith.
Pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the panel directs that the domain names names <icq-hacks.com> <icq-hacks.net> <icq-plus.net> and <map-quest.net> be transferred to the Complainant.
Dated: July 1, 2001
1. Reuters Limited v. Global Net 2000, Inc. (WIPO Case No. D2000-0441). See also Hewlett-Packard Company v. Full System S.a.S. (NAF Case No. FA0094637); David G. Cook v. This Domain is For Sale (NAF Case No. FA0094957) and Gorstew Jamaica and Unique Vacations, Inc. v. Travel Concierge (NAF Case No. FA0094925). (back to text)
2. See The Stanley Works and Stanley Logistics, Inc v. Camp Creek. Co., Inc. (WIPO Case No. D2000-0113), Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd. (WIPO Case No. D2000-0802) and Nokia Corporation v. Nokiagirls.com a.k.a IBCC (WIPO Case No. D2000-0102). For a typical US case see Sportyís Farm L.L.C. v. Sportsmanís Market, Inc., 202 F.3d 489, 497-98 (2d Cir. 2000) (the differences between the trademark "sportyís" and the domain name <sportys.com> Ė specifically, an apostrophe in the trademark and the addition of .com in the domain name Ė are "inconsequential," such that the domain name is "indistinguishable" from and "certainly Ďconfusingly similarí to the protected mark"). (back to text)
3. AltaVista Company v. S.M.A., Inc. (WIPO Case No. D2000-0927); Gateway, Inc. v. Pixelera.com, Inc (formerly Gateway Media Productions, Inc.) (WIPO Case No. D2000-0109). (back to text)
4. SportSoft Golf, Inc. v. Hale Irwinís Golfersí Passport (NAF Case No. FA0094956). Likewise Marriott International, Inc. v. John Marriot (NAF Case No. FA0094737); 163972 Canada Inc. v. Sandro Ursino (DeC Case No. AF-0211) and Centeon L.L.C./Aventis Behring L.L.C. v. Ebiotech.com (NAF Case No. FA0095037). (back to text)