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THE NATIONAL ARBITRATION FORUM
P. O. BOX 50191
MINNEAPOLIS, MINNESOTA 55405 USA
_____________________________________________________
America Online, Inc. ("AOL")
22000 AOL Way
Dulles, Virginia 20166,
COMPLAINANT,
vs.
QTR Corporation
Paris, France,
RESPONDENT.
DECISION
Forum File No.: FA0001000092016
_____________________________________
The above entitled matter came on for an administrative hearing on February
4, 2000 before the undersigned on the Complaint
of America Online, Inc.
("AOL"), hereafter "Complainant", against QTR Corporation,
hereafter "Respondent". Complainant
was represented by James
R. Davis. II, 1050 Connecticut Avenue, N. W., Washington, D. C. 20036.
There was no representation
on behalf of Respondent. Upon the written
submitted record, the following DECISION is made: PROCEDURAL
FINDINGS Domain Name: icqsms.com Domain Name Registrar: Network Solutions,
Inc. Domain Name Registrant: QTR Corporation Date of Domain
Name Registration:
December 3, 1999 Date Complaint Filed: January 11, 2000
Date of Commencement of Administrative Proceeding in Accordance with
Rule 2(a) and Rule 4(c): January 11, 2000 Due date
for a Response: February
3, 2000. Respondent did not submit a Response to the Complaint.
After reviewing the Complaint, and determining it to be in administrative
compliance, the National Arbitration Forum
(The Forum) forwarded the Complaint
to the Respondent on January 11, 2000 in compliance with Rule 2(a), and
the administrative
proceeding was commenced pursuant to Rule 4(c). In compliance
with Rule 4(d), The Forum immediately notified Network Solutions,
Inc.(Network
Solutions), the Internet Corporation for Assigned Names and Numbers (ICANN),
and the Complainant that
the administrative proceeding had commenced. Respondent
did not submit a response to The Forum within twenty (20) days pursuant
to Rule 5(a). On December 3, 1999, Respondent registered the domain name
"icqsms.com" with Network Solutions, the entity
that is the Registrar
of the domain name. On January 11, 2000, Network Solutions verified that
Respondent is the Registrant
for the domain name "icqsms.com",
and that further by registering its domain name with Network Solutions,
Respondent
agreed to resolve any dispute regarding its domain name through
ICANN’s Rules for Uniform Domain Name Dispute Resolution
Policy, and
the Uniform Domain Name Dispute Resolution Policy. FINDINGS
OF FACT
- That Complainant is the owner of numerous trademarks, service marks,
and trade names that include the term "ICQ", e.g.
ICQ, ICQ
IT!, ICQ SMS (collectively the ICQ Marks). Complainant also uses the
mark ICQ.COM as the domain name
for its portal Web site for the ICQ
services. The ICQ Marks are used extensively at this portal Web site,
which
is a significant method of promoting the ICQ service.
- That Complainant is the owner of at least 9 trademark registrations
worldwide for the mark ICQ, including registration
in Austria, Australia,
Chile, Denmark, Finland, France, Mexico, Norway, and Switzerland.
- That as early as 1996, Complainant and its predecessor-in-interest
adopted and began using many of its ICQ Marks in connection
with computer
on-line services and other Internet-related services. Complainant adopted
and began using the
Mark ICQ SMS publicly at least as early as November,
1999 in connection with wireless services offered through the ICQ
service.
The ICQ Marks have been used continuously and extensively in interstate
and international commerce
in connection with the advertising and sale
of Internet-related services.
- That Complainant has invested substantial sums of money in developing
and marketing its service.
- That Respondent registered the domain name "icqsms.com"
in bad faith and has no rights or legitimate interests in respect
to
said domain name. The following is evidence of Respondent’s bad
faith:
- That Respondent registered the domain name on December 3, 1999,
shortly after Complainant’s adoption and first use
of the mark
"ICQ SMS" in November 1999, and long after Complainant began
using its other ICQ marks.
- That respondent has made no legitimate use of the domain name "icqsms.com"
and it seeks to profit from its registration
of said domain name by
trading upon the goodwill associated with the ICQ Marks. Respondent’s
profit
motive is evidenced by its offer to sell said domain name by
listing in the WHOIS directory "…This domain name
is for
sale…." Further that Respondent provided incomplete and/or
false contact information in the
WHOIS directory by failing to provide
any street address or street name, and that the facsimile number provided
does not route to a legitimate facsimile number.
- Respondent, or persons affiliated with Respondent, have engaged
in a pattern of registering domain names that infringe
upon other
entities’ marks.
- Complainant’s prayer for relief requests that the domain name
"icqsms.com" be transferred from Respondent to Complainant.
CONCLUSIONS The undersigned certifies that he has
acted independently and has no known conflict of interest to serve as the
Arbitrator
in this proceeding. Having been duly selected, and being impartial,
the undersigned makes the following findings and conclusions:
- The domain name "icqsms.com", registered by Respondent on
December 3, 1999 with Network Solutions, is identical to Complainant’s
ICQ Mark, ICQ SMS and is nearly identical and confusingly similar to
the other ICQ marks in which Complainant
has rights, including the mark
ICQ, and to which Respondent has no right or legitimate interests.
- Respondent registered and acquired the domain name "icqsms.com"
primarily for the purpose of selling or otherwise transferring
the said
domain name registration to the Complainant who is the owner of the
trade mark or service mark, or
to a competitor of the Complainant, for
valuable consideration in excess of Respondent’s out-of-pocket
costs directly related to the domain name. Respondent registered and
used the domain name in bad faith.
DECISION
Based upon the above findings and conclusions, and pursuant to Rule 4(i),
it is decided as follows: THE UNDERSIGNED
DIRECTS THAT THE DOMAIN NAME
"icqsms.com" REGISTERED BY RESPONDENT QTR CORPORATION BE TRANSFERRED
TO COMPLAINANT AMERICA
ONLINE, INC. (AOL). Dated: February 10, 2000, by
Judge Harold Kalina (Ret.), Arbitrator |
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