WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

America Online Inc v. M Mike

Case No. D2001-1051

 

1. The Parties

The Complainant is America Online Inc, a company incorporated in Delaware, having its principal place of business at 22000 AOL Way, Dulles, Virginia, 20166 in the United States of America.

The Respondent is named as M Mike, PO 1192 Box, Moscow, 11928 RU.

 

2. The Domain Name and Registrar

The contested domain names are <icqauto.com> and <icqserv.com>.

The registrar is Network Solutions Inc, 505 Huntmar Park Drive, Herndon, Virginia 20170, United States.

 

3. Procedural History

The electronic version of the Complaint was filed on August 21, 2001. The hardcopy of the Complaint was received on August 23, 2001.

On August 23, 2001, the Center transmitted via email to Network Solutions Inc a request for registrar verification in connection with this case and on August 24, 2001, the Center received a verification response confirming that the domain names are registered with Network Solutions Inc. and that the Registrant for the domain names is the Respondent.

In accordance with Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy ("ICANN Rules") and Paragraph 5 of the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"), the Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("ICANN Policy"), ICANN Rules and Supplemental Rules.

On August 27, 2001, the Center formally notified the Respondent of the Complaint and of the commencement of this administrative proceeding and sent copies to the Complainant, the Registrar and ICANN.

In accordance with the ICANN Rules, the last day for submitting a Response was September 12, 2001. The Respondent filed a Response by e-mail on September 12, 2001. On September 13, 2001, a Response Deficiency Notification was sent to the Respondent requesting the Respondent to remedy the deficiencies by September 16, 2001.

On October 18, 2001, the parties were notified that Mr. Swinson had been appointed as the sole panelist and that a decision was to be handed down by November 1, 2001, (save exceptional circumstances).

The language of the proceeding is English.

The Panel is satisfied that the Complaint was filed in accordance with the requirements of the ICANN Rules and Supplemental Rules; payment was properly made; the Panel agrees with the Centerís assessment concerning the Complainantís compliance with the formal requirements; the Complaint was properly notified to the Respondent in accordance with paragraph 2(b) of the ICANN Rules; the Respondent electronically filed a copy of the Response within the extended timeframe allowed by the Center; the Administrative Panel was properly constituted.

 

4. Factual Background

The Complainant is the owner of trademark registrations for the mark "ICQ" in a number of countries. It has pending trademark applications in other countries.

The mark has been used at least since 1996 in connection with telecommunications services, in particular, in relation to an Internet Chat service.

The Complainant also owns numerous common law trademarks, service marks and trade names, which include the mark "ICQ" (e.g., "ICQphone", "ICQmail").

According to information at the website <www.icq.com>:

"ICQ Inc., the successor of Mirabilis Ltd. was created when America Online acquired all Mirabilis' assets on June 1998. Mirabilis was founded in July 1996 when four young Israeli avid-computer users established a new Internet company. Yair Goldfinger (26,Chief Technology Officer), Arik Vardi (27,Chief Executive Officer), Sefi Vigiser (25,President), and Amnon Amir (24, currently studying), created the company in order to introduce a new way of communication over the Internet. They observed the fast deployment of the World Wide Web which was propelled by the mounting popularity of surfing and browsing, and watched the growing number of people interacting with web servers. They realized, however, that something more profound was evolving under the surface. Millions of people have been connected to one huge worldwide network - the Internet. They noticed that those people were connected - but not interconnected. They realized that if one missing component would be added, all these people, in addition to interacting with web servers, would be able to interact with each other. The missing link was the technology which would enable the Internet users to locate each other online on the Internet, and to create peer-to-peer communication channels, in a straight forward, easy, and simple manner. They pioneered this technology, that way opening a whole new industry."

On July 31, 2001, the Complainant by its lawyers wrote to the Respondent setting forth the Complainantís trademark rights in the ICQ mark, and requesting that Respondent cease all unauthorized use of the ICQ mark.

The Respondent responded to the Complainantís lawyers email, "You want buy this domains? i want know your priced for every domain".

 

5. Partiesí Contentions

A. Complainant

The Complainantís submissions can be summarized as follows:

The Complainant and ICQ, Inc. are the owners of 22 trademark registrations in various countries for the mark "ICQ".

The ICQ mark has been used since at least as early as November 1996.

The Complainant is the owner of numerous common law trademarks, service marks and trade names that include ICQ.

The Complainant uses <icq.com> as the domain name for its portal website for the ICQ service.

The ICQ mark has been used extensively in interstate and international commerce.

Each year, tens of millions of customers worldwide obtain goods and services offered under the ICQ mark.

Sales of services under the ICQ mark have amounted to many millions of dollars. As a result, the general public has come to associate the ICQ name and mark with services of a high and uniform quality.

The ICQ service has registered over 100,000,000 subscribers worldwide, making it one of the largest online communities in the world. The ICQ service is provided in several international languages, including Russian.

Many years after the Complainantís first use of its ICQ mark, the Respondent registered the contested domain names for the bad faith purpose of profiting from the goodwill the Complainant has created in its ICQ mark. The domains are used in connection with two different websites, neither of which constitutes a legitimate or bona fide offering of goods and services. In fact, both websites, for different reasons, are likely to confuse consumers and are calculated to play off the fame and international goodwill AOL has created in its ICQ mark.

The domain names <icqauto.com> and <icqserv.com> are confusingly similar or nearly identical to the ICQ mark. The addition of the suffixes "auto" or "serv" is insufficient to prevent consumer confusion. The use of the very famous and distinctive ICQ mark is likely to lead ICQ users and consumers to believe falsely that the websites and services are associated with, or endorsed by the Complainant. The likelihood of confusion is exacerbated because the <icqauto.com> site refers to the official ICQ service in a manner that infers an affiliation ("A new service is available for your ICQ") and makes use of the ICQ Flower logo. Therefore, Respondent has registered and is using the contested domain names in an attempt to create the impression that ICQ or the Complainant endorse or operate the <icqauto.com> or <icqserv.com> sites. The Respondent registered, used, and continues to use the contested domain names in bad faith to capitalize on the famous ICQ mark and to confuse consumers.

The Respondent has no rights or legitimate interests in respect to the contested domain names. The Respondent is not named ICQ and is not licensed to use the ICQ mark or the famous ICQ Flower logo. The following is evidence of Respondentís bad faith registration and use of the domain names:

(a) Respondentís bad faith registration and use of <icqauto.com> and <icqserv.com> is evidenced by the fact that Respondent registered the contested domain names many years after the Complainantís adoption and first use of its ICQ Marks. Moreover, Respondent chose not to use its true identity in the Whois records and, instead, used the incomplete registrant name "M, Mike."

(b) The Respondent has used the domains in different ways; however, both Websites constitute a bad faith use of the ICQ mark. The <icqauto.com> site refers to the Complainantís ICQ service, and makes prominent use of the ICQ Flower logo. The <icqauto.com> site requests users to provide their ICQ Number (also known as a "UIN" or "Universal Internet Number") and uses language that would lead consumers to believe the ICQ Auto service is affiliated with ICQ. The Respondentís bad faith use of <icqserv.com> is shown by the fact that the domain name is used to promote a commercial website that makes no reference to ICQ or the Complainant. The Respondent is not using <icqserv.com> for a legitimate or fair use, but rather to divert consumers and confuse them into believing that the commercial services provided at <icqserv.com> are provided, endorsed, or affiliated with the Complainant or ICQ (hence the name "ICQ Serv").

(c) On July 31, 2001, the Complainant by its lawyers wrote to the Respondent setting forth the Complainantís trademark rights in the ICQ mark, and requesting that Respondent cease all unauthorized use of the ICQ mark. The Respondentís bad faith use of the domain names <icqserv.com> and <icqauto.com> is demonstrated by Respondentís reply, less than two hours later where the Respondent asked the following: "You want buy this domains? I want know your price for every domain." The Respondentís immediate offer to sell the domains to AOL is additional evidence of a bad faith intent to profit from the registration and use of the domains. Such conduct also shows that Respondent never had a bona fide intention to use the domain names in connection with a legitimate offering of goods and services. Instead, the Respondent used the domains to profit from the associated Websites, and then immediately offered to sell the domains as soon as the Complainant objected to the unauthorized use of the ICQ name and mark.

The Complainant further alleges that the Respondent is not using the contested domain name in connection with its own business and the Respondent has no connection with the business or goods and services provided by the Complainant.

B. Respondent

The Respondent was unrepresented in this dispute.

The Respondent made the following statements in his Response:

"1. Representatives of AOL blame me in cybersquatting making quotation of my phrase "you want to buy my domains?" By this phrase I didnít want to offer to sell my domains. Not me but they made a contact with me and offered to give them my domains for free "we request that you immediately stop using these domains, and agree to transfer them to out client." This is against all elementary rules of business that is why I decided that understood them wrong and by my phrase I only specified the meaning of their claims. Before that I was never going to sell these domains and I have never made such offers to anyone including to AOL, too. And, please, do not carp at my words because nothing changes in problem.

2. Concerning using of logotypes.

Yes, the elements of old design of <icq.com> were used at my sites. That was the mistake of my webmaster, I admitted that and all that elements have been removed except copyrights of my designer. Besides, there is premordialy notice about who is the owner of ICQ trademark and that AOL has no attitude to my site:

"ICQ" and the "Mirabilis" logo are the trademarks or registered trademarks of AOL Inc. in the United States and/or other countries. AOL and its subsidiaries have no affiliation with this website. AOL and its subsidiaries do not review, sponsor or endorse this website or its contents. And you shouldnít have any doubt concerning these.

3. Concerning the trademark.

As it was correctly noticed by representatives of AOL its trademark officially registered in many countries:

"America Online, Inc. and ICQ, Inc. (collectively "AOL"), are the owners of at least 22 trademark registrations worldwide for the mark ICQ, including registrations in the United States, Australia, Austria, Australia, Benelux, Chile, China, Denmark, Finland, France, Germany, Iceland, Israel, South Korea, Mexico, New Zealand, Norway, Panama, Portugal, Slovenia, Spain, Sweden, and Switzerland" But not in Russia Ė the territory of acting of my domains. So, I do not consider as the citizen of Russia that by owing these domains I break someoneís copyrights. Moreover I claimed to reserve trademarks icqauto, isqserv. And I do not pretend on ICQ trademark.

4. Concerning the quality of services of AOL and ICQ.

No doubt that ICQ and AOL give services of high quality. I canít and I has no desire to compete with them. Additional services for clients using ICQ program given on my site are unique. Special software has been worked out by my programmers for that. By the way about the quality: many ICQ users openly criticize AOL for the absence of good technical support and for tyranny of admins who delete UIN without any reasons and without giving any chance to restore it. I have been the victim of such tyranny myself.

5. Concerning the quality of my service.

As I told before special software has been worked out by programmers. At present time I have permanent clients using service given on my site and I have new clients every day. That means that my service is demanded. I wouldnít like to deprive these people an opportunity to use this service because of whims of AOL.

6. Concerning my expenditures.

As I told before I was offered to give my domains to AOL by its representatives. When I told that it was impossible I was offered my expenditures to be compensated ($35 for each domain) Ė that is ridiculous. After that there was a pressure on my host Ė he was demanded to stop giving me hosting service, and that is not very nice of AOL.

I spent money and time for creating and making advertisement of my service. And I supposed to take profit from its functioning and I havenít plans to give or to sell my domains. Thatís why I told to representatives of AOL that if they had a strong desire to get my domains then I was ready to think about offers of AOL if they were more serious than previous ones. If AOL will try to get my domains illegally or to switch off their users from my service then representatives of my constitutors in USA will bring of a suit to AOL."

 

6. Discussion and Findings

In order to qualify for a remedy, the Complainant must prove each of the three elements set out in Paragraph 4(a) of the ICANN Policy, namely:

(i) the 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 domain name has been registered and is being used in bad faith.

The onus of proving these elements is on the Complainant.

6.1 Identical or confusingly similar to a trademark or service mark

The panel must find that: (a) the Complainant has a trademark or service mark; and (b) that the contested domain name is identical or confusingly similar to that trademark or service mark.

The Complainant has presented substantial evidence as to the fame of the ICQ mark. However, the evidence presented is confusing -- it is unclear whether the Complainant or ICQ, Inc. owns the trademark rights in the ICQ mark. There was no evidence presented by the Complainant as to the association between ICQ, Inc. and the Complainant.

For example, it appears that ICQ, Inc. owns the U.S. trademark registration for "ICQ" and that the Complainant owns (for example) the Australian trademark registration for "ICQ".

The Complainantís whois database states that ICQ, Inc. (not the Complainant) owns the domain name <icq.com>.

In short, the evidence presented as to ownership of the ICQ mark is brief and confused.

Although there is confusion in the evidence as to ownership of the ICQ trademark, this confusion is not sufficient for the panel to decide that the Complainant does not have trademark rights in "ICQ". A number of trademark registrations included in evidence show that the Complainant has trademark rights in "ICQ" in a number of countries. Compare the situation here with Ken Done, Ken Done & Associates Pty Limited, and Ken Done Down Under Pty Limited v. Ted Gibson, eResolution Case Number AF-0638.

The panel notes that the Respondent does not contest the Complainantís ownership of the ICQ mark. This is explicitly stated in the Response, and the Respondent acknowledges the Complainantís trademark rights to "ICQ" on the <icqauto.com> website. (The Respondent did, however, claim that he owned "ICQserve" and "ICQauto".)

The domain name <icqserv.com> is, in the judgment of the Panel, confusingly similar to the Complainantís mark "ICQ". The addition of the generic term "serv" does nothing to deflect the impact on the viewer of the mark "ICQ". See, for example, a discussion of relevant trademark law in AT&T Corp v Tala Alamuddin (WIPO Case No. D2000-0249) in section 6 of that decision.

The same reasoning applies to the domain name <icqauto.com>.

The Respondent states that the Complainant does not have trademark rights in Russia (where the Respondent is located) in relation to "ICQ". In relation to Paragraph 4(a)(i) of the ICANN Policy, that is irrelevant. As stated in Oshawa Centre Holdings Inc. v. M. Bharwani, eResolution Case No. AF-0820 (three panel decision):

"The purpose of this test is that the complainant must prove that it has trademark rights in words similar to the disputed domain name and is not making a spurious claim. The Complainant does not have to prove that it would succeed in a trademark infringement case against the Respondent. It is also irrelevant under this test that the Respondent may be in another jurisdiction where the Complainant does not have trademark rights.

In short, it is not a requirement for the Complainant to prove that the Complainant has the exclusive rights to its trademark in relation to all types of goods and services in all countries in the world. There is no requirement that the Respondent is infringing or may infringe those trademark rights. For this test, it is irrelevant whether or not the Respondent knew of the Complainant's trademark."

As a result, the panel finds that the two contested domain names are confusingly similar to the Complainantís trademarks.

6.2 Illegitimacy

Under Paragraph 4(c) of the ICANN Policy, the Respondent may demonstrate its rights and interests in the contested domain name by showing any of the following circumstances, in particular but without limitation:

(i) its use of, or demonstrable preparations to use, the contested domain name or a name corresponding to the contested domain name in connection with a bona fide offering of goods or services before any notice to it of the dispute; or

(ii) it (as individuals, a business, or other organization) has been commonly known by the contested domain name, even if it has acquired no trademark or service mark rights; or

(iii) it is making a legitimate noncommercial or fair use of the contested domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Those circumstances are not exhaustive of the circumstances that may establish rights or legitimate interests.

The Respondent had the opportunity to respond and present evidence, for example, that it is a legitimate business that registered the domain name without knowledge of the Complainantsí rights. The Respondent chose not to present any tangible evidence, but just made bald statements. The Complainant is not entitled to relief simply by default, but the panel can and does draw evidentiary inferences from the failure to respond. See Royal Bank of Canada v. D3M Domain Sales (eResolution Case No. AF-0147, May 1, 2000).

As stated in Madonna Ciccone v. Dan Parisi, WIPO Case No. D2000-0847, "use which intentionally trades on the fame of another cannot constitute a Ďbona fideí offering of goods or service. . . . to conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation which is obviously contrary to the intent of the Policy."

The Respondentís website at <icqauto.com> includes the following statement, as included in the Complainantís evidence:

"A new service is available for your ICQ now. Offline autoresponder gives you an opportunity to send messages to your friends even when you are offline. Autoresponder will receive all your messages and store them for you in your own mail box. The volume of your mail box is unlimited. No messages will be lost. This will be very helpful if you stay offline for a long time. The number of unread messages that the ICQ server can keep for you is very little, it usually doesn't exceed 25 messages, the rest of them are lost. With our new service you will not have to worry about lost messages anymore. We will receive and keep all your incoming messages and send the ones you have left."

The service provided by the Respondent at the <icqauto.com> website appears to be a legitimate service, one that is an enhancement to the Complainantís ICQ service. The Respondentís service requires that the user enter a user code and password for the Complainantís service, and the Respondentís service appears to attempt to interact with the Complainantís service. The Respondent, on the website, describes the service as "Offline autoresponder for ICQ". However, even though the service may be legitimate, it is not legitimate to use anotherís trademark as the domain name for the service.

The Panel decides that the Respondent has no rights or legitimate interests in the domain names at issue.

6.3 Bad Faith

Paragraph 4(b) of the ICANN Policy states that any of the following circumstances, in particular but without limitation, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the Respondent has registered or has acquired the contested domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to the contested domain name; or

(ii) the Respondent has registered the contested domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondentís 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 the Respondentís Website or location or of a product or service on the Respondentís Website or location.

A number of previous decisions based upon the ICANN Policy have held that an offer to sell a domain name in itself is not sufficient evidence to prove that the Respondent registered and is using the domain name in bad faith. See, for example, Centennial Communications Corporation and Centennial de Puerto Rico v. Centennial WIPO Case No. D2000-1385.

The panel believes that the <icqauto.com> site confuses potential users as to the Respondentís association with the Complainant. The overall impression is that the Respondentís site is associated with the Complainant. The site also uses the Complainantís well-know flower logo.

It is clear that the Respondent is well aware of the Complainantís service and trademark rights.

The only reasonable conclusion is that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondentís 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 the Respondentís website or location or of a product or service on the Respondentís website or location

 

7. Decision

For the reasons set forth above and pursuant to Paragraph 4(i) of the ICANN Policy and 14 of the ICANN Rules, the Panel orders that the contested domain names <icqauto.com> and <icqserv.com> be transferred to the Complainant.

 


 

John Swinson
Sole Panelist

Dated: November 1, 2001