WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
America Online, Inc. v. Exit New York Magazine Corp., a/k/a Exit Magazine Corp.
Case No. D2001-0673
1. The Parties
1.1 The Complainant is America Online, Inc., a corporation organized under the laws of the State of Delaware, United States of America, having its principal place of business at 22000 AOL Way, Dulles, Virginia, United States of America.
1.2 The Respondent is Exit New York Magazine Corp., also known as Exit Magazine Corp., an entity having an address at P.O. Box 2174, Grand Central Station, New York, New York, United States of America.
2. The Domain Names and Registrar
The domain names at issue are <icqmodels.com> and <icqsingles.com>, which domain names are registered with Network Solutions, Inc., based in Herndon, Virginia, United States of America.
3. Procedural History
3.1 A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on May 18, 2001, and the signed original together with four copies was received on May 22, 2001. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated May 22, 2001.
3.2 On May 22, 2001, a Request for Registrar Verification was transmitted to the registrar, Network Solutions, Inc. ("NSI") requesting it to: (1) confirm that the domain names at in issue are registered with NSI; (2) confirm that the person identified as the Respondent is the current registrant of the domain names; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the registrar’s Whois database for the registrant of the disputed domain names, the technical contact, the administrative contact and the billing contact; (4) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in effect; (5) indicate the current status of the domain names.
3.3 On May 25, 2001, NSI confirmed by reply e-mail that the domain names are registered with NSI, are currently in active status, and that the Respondent is the current registrant of the names. The registrar also forwarded the requested Whois details, and confirmed that the Policy is in effect.
3.4 The WIPO Center determined that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"), the Uniform Rules, and the Supplemental Rules. The required fees for a sole Panelist were paid on time and in the required amount by the Complainant.
3.5 No formal deficiencies having been recorded, on May 28, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, NSI and ICANN), setting a deadline of June 16, 2001, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by e-mail to the e-mail addresses indicated in the Complaint and specified in NSI’s confirmation. In addition, the complaint was sent to the postal address given. Having reviewed the communications records in the case file, the Administrative Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."
3.6 On June 18, 2001, not having received any response, the WIPO Center sent the parties a formal Notification of Respondent Default.
3.7 On July 31, 2001, in view of the Complainant's designation of a single Panelist, the WIPO Center appointed M. Scott Donahey to serve as sole Panelist.
4. Factual Background
4.1 Complainant registered the trademark ICQ in connection with computer operating programs that may be downloaded from a computer information network, computer software and related products and services with the United States Patent Office ("USPTO") on December 12, 2000, showing a first use in commerce of November 1996. Complaint, Annex B.
4.2 Complainant has also registered numerous trademarks and service marks that include the ICQ mark, such as ICQ games, ICQ Phone, ICQmail, ICQ Search, etc. Complainant uses the domain name <icq.com> to resolve to a web site that serves as the portal web site for ICQ service. Complaint, Annex B.
4.3 Complainant has invested substantial sums of money in the development and marketing of its ICQ goods and services. Sales of services under the ICQ mark have amounted to many millions of dollars.
4.4 On January 11, 2000, Respondent registered the domain names at issue. Complaint, Annex D.
4.5 Respondent has used the domain names at issue to resolve to a web site. The web site is a directory service. Complaint, Annex H. The web site contains no links or references to ICQ or Complainant.
4.6 Complainant has sent Respondent two letters requesting transfer of the domain names at issue. Complaint, Annex F. Respondent did not respond to the request.
5. Parties’ Contentions
5.1 Complainant contends that Respondent has registered domain names which are confusingly similar to the trademarks and service marks registered and used by Complainant, that Respondent has no rights or legitimate interests in respect to the domain names at issue, and that Respondent has registered and is using the domain names at issue in bad faith.
5.2 Respondent has not contested the allegations of the Complaint.
6. Discussion and Findings
6.1 Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable."
6.2 Since both the Complainant and Respondent are domiciled in the United States, and since United States’ courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.
6.3 Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) that the domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
2) that the Respondent has no rights or legitimate interests in respect of the domain names; and,
3) that the domain names have been registered and are being used in bad faith.
6.4 The domain names at issue, which include Complainant's ICQ mark and an additional descriptive term, are confusingly similar to Complainant's mark. The Professional Golfers Association of America v. Robert Baldwin, WIPO Case No. D2000-0339.
6.5 Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the domain names at issue. Alcoholics Anonymous World Services, Inc. v. Raymond, WIPO Case No. D2000-0007; Bronson Plc v. Unimetal Sanayai ve Tic. A.S., WIPO Case No. D2000-0011.
6.6 Complainant alleges that Respondent is using the domain names at issue to intentionally attempt to attract, for commercial gain, Internet users to Respondent's web site, by creating a likelihood of confusion with Complainant's mark as to the source sponsorship affiliation or endorsement of the web site or the products or services located or referenced there. Policy, ¶ 4(b)(iv). The Panel agrees that by using the domain names that are confusingly similar to Complainant's well-known mark to bring Internet users to Respondent's commercial directory site, Respondent intends to profit from the users' confusion. Tata Sons Ltd. v. The Advanced Information Technology Association, WIPO Case No. D2000-0049.
For all of the foregoing reasons, the Panel decides that the domain names registered by Respondent are confusingly similar to the trademarks and service marks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain names at issue, and that the Respondent's domain names have been registered and are being used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain names <icqmodels.com> and <icqsingles.com> be transferred to the Complainant.
M. Scott Donahey
Dated: August 2, 2001