DECISION

America Online, Inc. v. Roush Enterprises

Claim Number:  FA0309000193882

PARTIES

Complainant is America Online, Inc., Dulles, VA (“Complainant”) represented by James R. Davis, of Arent Fox Kintner Plotkin & Kahn, PLLC.  Respondent is Roush Enterprises, Vancouver, BC, Canada (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <icq-download.com>, registered with Tucows, Inc.

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.

Judge Harold Kalina (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on September 10, 2003; the Forum received a hard copy of the Complaint on September 12, 2003.

On September 11, 2003, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <icq-download.com> is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. 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 September 15, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 6, 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@icq-download.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 October 12, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (Ret.) 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 transfer of the domain name from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <icq-download.com> domain name is confusingly similar to Complainant’s registered ICQ mark.

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

3. Respondent registered and used the <icq-download.com> domain name in bad faith.

B.  Respondent did not submit a Response in this proceeding.

FINDINGS

Complainant holds several trademark registrations for the ICQ mark throughout the world, including Reg. No. TMA557935 (Canada) and Reg. No. 2,411,657 (United States).  Complainant’s ICQ mark has been used in commerce since at least 1996 in association with downloadable computer programs, online informational services, online directory services, and telecommunications services.  Complainant uses the mark in combination with terms related to its services, such as ICQdownload, ICQmail, ICQphone, ICQgames, and ICQcommunity.

Complainant asserts that it has invested substantial sums of money in developing and marketing its services under the ICQ mark, and that tens of millions of customers obtain goods and services offered under the mark each year.  The ICQ service has been downloaded over 200,000,000 times around the world.

Respondent registered the <icq-download.com> domain name on May 3, 2000, and uses it to deceptively direct users to pornographic websites, unrelated to ICQ.  The web page hosted at the disputed domain name also incorporates the ICQ mark in its meta-tags so that search engines will direct users to Respondent’s site when looking to download the ICQ program.

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 its rights in the ICQ mark through registration in Canada and other countries.  Respondent’s domain name incorporates the entire mark, suffixing it with a hyphen and the word “download.”  Given Complainant’s substantial online presence, the addition of the word “download” does not materially distinguish the domain name from Complainant’s mark.  Accordingly, the domain name is confusingly similar to Complainant’s ICQ mark.  See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business); see also Am. Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001) (finding that the addition of the generic word “Net” to Complainant’s ICQ mark, makes the <neticq.com> domain name confusingly similar to Complainant’s mark).

Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name.  As Respondent has not come forward to contest this assertion, the Panel may accept it as true.  See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

The record indicates that Respondent uses the disputed domain name and meta-tages in the associated website to lead Internet users to the site and then direct them to pornographic materials through deceptively labeled links.  Such use of Complainant’s mark in the domain name will not establish a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name.  See Paws, Inc. v. Zuccarini a/k/a Country Walk, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”); see also Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that Respondent’s use of Complainant’s mark to “define the location of Respondent’s website on the Internet” and to host a pornographic website was not a legitimate noncommercial or fair use of the domain name).

As there is no evidence presented to establish that Respondent is commonly known by the <icq-download.com> domain name, the Panel concludes that Respondent has no rights or legitimate interests in respect of the <icq-download.com> domain name.  As such, Policy ¶ 4(a)(ii) is satisfied.

Registration and Use in Bad Faith

Complainant’s ICQ service is well-known throughout the Internet and Respondent’s use of the mark in its website’s meta-tags confirms that Respondent was personally aware of Complainant’s service and mark at the time it registered the <icq-download.com> domain name.  Registration and use of a domain name with actual knowledge of another’s rights in that mark demonstrates bad faith within the meaning of the Policy.  See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the domain name in bad faith).

By intentionally using the domain name to misleadingly direct users to pornographic websites, Respondent has further demonstrated its bad faith in using the name.  See Wells Fargo & Co. v. Party Night Inc. & Carrington, FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that Respondent’s use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith).

Policy ¶ 4(a)(iii) has been satisfied.

DECISION

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

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

Judge Harold Kalina (Ret.), Panelist

Dated:  October 24, 2003

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