WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
America Online, Inc. v. Anthony Tirona
Case No. D2001-0645
1. The Parties
The Complainant is America Online, Inc. (AOL). AOL is a Delaware (USA) corporation with its principal place of business in Dulles, Virginia (USA). AOL is represented by James R. Davis, II of Arent Fox Kintner Plotkin & Kahn, Washington, DC, USA.
The Respondent is Anthony Tirona, an individual who resides in Claremont, California, USA.
2. Domain Names and Registrar
The domain names at issue are:
They are referred to as the Domain Names. The registrar is TierraNet, Inc. d/b/a/ DomainDiscover.
3. Procedural History and Jurisdiction
The WIPO Arbitration and Mediation Center (the Center) received the Complainant's complaint on May 11, 2001 (electronic copy) and May 15, 2001 (hard copy). The Center verified that the complaint satisfies the formal requirement of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). Complainant made the required payment to the Center. The formal date of the commencement of this administrative proceeding is May 21, 2001.
On May 16, 2001, the Center transmitted via email to TierraNet, Inc. a request for registrar verification in connection with this case. On May 16, 2001, TierraNet, Inc. transmitted via email to the Center, TierraNet's Verification Response, confirming that the Respondent Anthony Tirona is the registrant and administrative, technical, zone, and billing contact.
Having verified that the complaint satisfied the formal requirements of the Policy and the Rules, on May 21, 2001, the Center transmitted to the Respondent Notification of Complaint and Commencement of the Administrative Proceeding via post/courier, facsimile, and e-mail.
Respondent failed to respond to the Notification of Complaint and Commencement of the Administrative Proceeding and the Center notified him of his default on June 11, 2001, via email.
In view of the Complainant's designation of a single panelist and Respondent's default the Center invited Mr. Richard G. Lyon to serve as a panelist.
Having received Mr. Lyon's Statement of Acceptance and Declaration of Impartiality and Independence, the Center transmitted to the parties a Notification of Appointment of Administrative Panel on July 13, 2001. The Projected Decision Date was July 27, 2001. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules, and that the panel has jurisdiction over this dispute.
The Administrative Panel shall issue its Decision based on the complaint, the evidence presented, the Policy, the Rules, and Supplemental Rules.
4. Factual Background
Complainant is the owner of at least 22 trademark registrations worldwide for the mark ICQ, including registrations in the United States, Australia, Austria, Benelux, Chile, China, Denmark, Finland, France, Germany, Iceland, Israel, South Korea, Mexico, New Zealand, Norway, Panama, Portugal, Slovenia, Spain, Sweden, and Switzerland. As set forth in these trademark registrations, the mark ICQ has been used since November 1996, in connection with the sale of: telecommunications services, computer operating programs that may be downloaded from a computer information network, and other computer services. Complainant has used the ICQ marks in connection with its enormously successful ICQ.COM website and many of the services offered on that website (e.g. ICQmail, ICQ 1,2,3 Center, ICQ Chat Rooms, etc.). At this website Complainant offers many computer and Internet-related goods and services.
Respondent registered the Domain Names on February 18, 2001. Respondent at some point apparently operated a commercial website using the Domain Names, through which Respondent offered to provide such goods and services as "Web Hosting" "Software" and "Online Money." The sites are no longer operative. Copies submitted with the Complaint have subject matter service headings in English with text in another language, said in the Complaint to be Russian (Footnote 1).
On April 12, 2001, Complainant's counsel sent Respondent a cease and desist letter, addressed to the address Respondent had furnished to the Registrar. This letter was returned "Not deliverable as addressed. Unable to forward."
5. Parties' Contentions
The Complainant's contentions may be summarized as follows:
The domains in question are confusingly similar or nearly identical to its ICQ marks. Respondent has no rights or legitimate interests in respect to the Domains. Respondent registered, used, and continues to use the Domain Names in bad faith as evidenced by his attempts to capitalize on the ICQ mark, to confuse consumers, his provision of false contact information, and his pattern of registering infringing domains in order that Complainant could not reflect its trademark in a corresponding domain name.
Respondent has failed to reply to the complaint.
6. Discussion and Findings
The Complainant must prove the elements set out in paragraph 4(a) of the Policy. These elements are as follows:
(i) Respondent's Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect to the Domain Names; and
(iii) Respondent's Domain Name have been registered and are being used in bad faith.
Complainant bears the burden of proof on each of these elements. Respondent's default does not automatically result in judgment for the Complainant.
Identity and Confusion.
The Domain Names all incorporate verbatim the Complainant's ICQ mark. The addition of the generic word sell to the trademarked ICQ is insufficient to distinguish the Domain Names from Complainant's marks, as has been held by numerous arbitrators and judges (Footnote 2). References within Respondent's website to AOL and other AOL trademarks only add to the likelihood of confusion. The Domain Names are identical to the Complainant's marks and are likely to cause confusion among Complainant's customers.
Legitimate Interest.
Nothing in the record suggests that Respondent has any legitimate interest of in the Domain Names. Complainant has not licensed Respondent to use its marks. Respondent has offered no reason why he needs to use the Complainant's marks or why he needs to register six variations on the Complainant's marks. Respondent has failed to offer any evidence that he has ever been known by the ICQ initials.
Bad Faith.
Paragraph 4(b) of the Policy sets out examples that shall be evidence of the registration and use of a domain name in bad faith. Section 4(b)(iv) of the Policy provides that the following will be evidence of bad faith:
"by using the domain name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or of a product or service on your web site or location."
Respondent�s web site includes prominent references to both AOL and ICQ, as well as to the ICQ for Palm Computing Platform and versions 2000 and 2000b of the ICQ service. The English portions of Respondent's websites suffice to show that Respondent is using the Domain Names for commercial purposes, that several of the services are comparable to those offered by Complainant, and that use of Complainant's marks was done intentionally to attract persons seeking Complainant's website and services. The offer of "ICQ UINS for Sale," with prices, illustrates all three of these matters. Registration and use of the Domain Names in bad faith are plainly proven by this.
7. Decision
For the foregoing reasons the Panel determines that the Complainant has proven each of the three elements in paragraph 4(a) of the Uniform Policy in relation to the Domain Names.
Pursuant to request by Complainant, paragraph 4(i) of the Policy, and paragraph 15 of the Rules, the Panel orders that the registration of the Domain Names be transferred to the Complainant.
Richard G. Lyon
Sole Panelist
Dated: August 3, 2001
Footnotes:
1. The non-English text of the web pages submitted as an exhibit to the complaint is gibberish. (back to text)
2. E.g., Professional Golfers of America v. Baldwin, WIPO Case No. D2000-0339. (back to text)
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