DECISION

America Online, Inc. v. Ibragimov Ruslan

Claim Number:  FA0304000155455

PARTIES

Complainant is America Online, Inc., Dulles, VA, USA (“Complainant”) represented by James R. Davis, II, of Arent Fox Kintner Plotkin & Kahn. Respondent is Ibragimov Ruslan, Moscow, RUSSIA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <icqis.com>, registered with Gandi.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

James A. Crary as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on April 23, 2003; the Forum received a hard copy of the Complaint on April 24, 2003.

On April 24, 2003, Gandi confirmed by e-mail to the Forum that the domain name <icqis.com> is registered with Gandi and that Respondent is the current registrant of the name. Gandi has verified that Respondent is bound by the Gandi registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On April 25, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 15, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@icqis.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On June 2, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Crary as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <icqis.com> domain name is confusingly similar to Complainant’s ICQ mark.

2. Respondent does not have any rights or legitimate interests in the <icqis.com> domain name.

3. Respondent registered and used the <icqis.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, America Online, Inc. and ICQ, Inc. (collectively, “Complainant”), owns numerous international trademark registrations for the ICQ mark, including registrations in the United States and Russia, the later representing Respondent’s purported place of domicile. Specifically, Complainant holds U.S. Patent and Trademark Office (“USPTO”) Reg. No. 2,411,657 for the ICQ mark registered on December 12, 2000. Complainant has used the ICQ mark at least as early as 1996 in connection with, inter alia: “telecommunication services, namely, services relating to electronic transmission of data, images and documents via computer terminals.”

Each year, tens of millions of consumers worldwide obtain goods and services offered under the ICQ mark, and millions more are exposed to Complainant’s mark through advertising. The ICQ service is offered to Internet users in Russia in their native language.

Complainant’s ICQ mark has been, and continues to be, widely publicized through substantial advertising in the U.S. and throughout the world. Complainant has expended significant resources in connection with its advertisements, which have been disseminated through network and cable television programs, radio broadcasts and in print media, including newspapers and periodicals.

Because of Complainant’s substantial advertising expenditures and sales, the distinctive ICQ mark has become well-known and famous among members of the consuming public. The ICQ service has been downloaded over 200,000,000 times around the world, making it one of the largest online communities in the world.

Respondent, Ibragimov Ruslan, registered the <icqis.com> domain name on December 23, 2000. The disputed domain name has been used in connection with commercial services, namely, to promote Respondent’s business that sells Internet and software services.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "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."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

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

Identical and/or Confusingly Similar

Complainant has established rights in the ICQ mark through registration with the USPTO and relevant Russian trademark authorities, and subsequent continuous use.

Respondent’s <icqis.com> domain name is confusingly similar to Complainant’s ICQ mark. Respondent’s domain name incorporates Complainant’s famous mark in its entirety, and merely deviates by the addition of “is.” By adding letters to the ICQ mark in the domain name, Respondent does not create a distinct mark, but nevertheless renders the domain name confusingly similar to Complainant’s mark. See Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such generic typos do not change Respondent’s infringement on a core trademark held by Complainant); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion).

Further, because top-level domains, such as “.com,” are inconsequential when conducting an analysis under Policy ¶ 4(a)(i), Respondent’s domain name is confusingly similar to Complainant’s mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top-level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent did not respond to Complainant’s assertions, thereby failing to fulfill its burden of demonstrating rights or legitimate interests in the subject domain name. Respondent’s failure to respond allows all reasonable inferences made by Complainant to be regarded as true, unless clearly contradicted by the evidence. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain name, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Furthermore, Respondent’s failure to submit evidence of circumstances that may suggest it has rights or legitimate interests in the disputed domain name corroborates Complainant’s assertion that Respondent has none. See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).

Uncontested evidence reveals that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor is Respondent making a noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). Respondent uses the <icqis.com> domain name to resolve to its commercial website, where Respondent sells various Internet and software services. Respondent makes unauthorized use of Complainant’s ICQ mark in the domain name and on its website, and therefore trades off of the goodwill Complainant has established in its mark. Such opportunistic use, if not sanctioned by the trademark holder, fails to establish rights or legitimate interests in the domain name under the Policy. See MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using Complainant’s mark by redirecting Internet traffic to its own website); see also Household Int’l, Inc. v. Cyntom Enter., FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (inferring that Respondent registered the domain name <householdbank.com>, which incorporates Complainant’s HOUSEHOLD BANK mark, with hopes of attracting Complainant’s customers and thus finding no rights or legitimate interests).

Respondent is not licensed or authorized to make use of Complainant’s ICQ mark in the domain name. As stated, Complainant’s ICQ mark is famous among the consuming public and the service that bears the ICQ name has been downloaded over 200,000,000 times around the world. At the time Respondent registered the infringing domain name, consumers had downloaded the ICQ software approximately 100 million times worldwide. Thus, the fame of Complainant’s ICQ mark creates a presumption that Respondent is not commonly known by a confusingly similar domain name, absent evidence to the contrary. Therefore, Respondent fails to establish rights or legitimate interests in the domain name under Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Foot Locker Retail, Inc. v. Bruce Gibson, FA 139693 (Nat. Arb. Forum Feb. 4, 2003) (stating that “[d]ue to the fame of Complainant’s FOOT LOCKER family of marks . . . and the fact that Respondent’s WHOIS information reveals its name to be “Bruce Gibson,” the Panel infers that Respondent was not “commonly known by” any of the disputed domain names prior to their registration, and concludes that Policy ¶ 4(c)(ii) does not apply to Respondent”).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent registered, used and continues to use the <icqis.com> domain name in bad faith by attempting to capitalize on Complainant’s famous ICQ mark while confusing Internet users. The infringing domain name resolves to Respondent’s commercial website, which makes prominent use of the ICQ mark in connection with the sale of software. It is evident that Respondent adopted Complainant’s famous ICQ mark in the domain name in order to either confuse Internet users as to the affiliation Complainant has with Respondent’s website, or to divert Internet users searching for Complainant’s ICQ services. Both situations indicate that Respondent intentionally attempted to attract Internet users to its commercial website by creating a likelihood of confusion with Complainant’s ICQ mark. Therefore, Respondent registered and used the subject domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <icqis.com> domain name be TRANSFERRED from Respondent to Complainant.

James A. Crary, Panelist

Dated:  June 10, 2003

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2003/595.html