DECISION

America Online, Inc. v. Adosi Ltd. a/k/a This Name Is For Sale - Make An Offer To: bdomains@yahoo.com

Claim Number:  FA0402000237570

PARTIES

Complainant is America Online, Inc. (“Complainant”), represented by James R. Davis, II, of Arent Fox PLLC, 1050 Connecticut Avenue, NW, Washington, DC 20036.  Respondent is Adosi Ltd. a/k/a This Name Is For Sale - Make An Offer To:  bdomains@yahoo.com (“Respondent”), GPO Box 12295 Central, Hong Kong.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <icqhelp.com>, <icqplugin.com>, <icqw.com>, <aoloffers.com>, <aolfavorite.com>, <aoladdress.com>, and <buddlist.com>, registered with Enom, Inc.

PANEL

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

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on February 19, 2004; the Forum received a hard copy of the Complaint on February 23, 2004.

On February 23, 2004, Enom, Inc. confirmed by e-mail to the Forum that the domain names <icqhelp.com>, <icqplugin.com>, < icqw.com>, <aoloffers.com>, <aolfavorite.com>, <aoladdress.com>, and <buddlist.com> are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, 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 February 23, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 15, 2004 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@icqhelp.com, postmaster@icqplugin.com, postmaster@icqw.com, postmaster@aoloffers.com, postmaster@aolfavorite.com, postmaster@aoladdress.com, and postmaster@buddlist.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 March 23, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (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 that the domain names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <icqhelp.com>, <icqplugin.com>, <icqw.com>, <aoloffers.com>, <aolfavorite.com>, <aoladdress.com>, and <buddlist.com> domain names are confusingly similar to Complainant’s AOL family of marks.

2. Respondent does not have any rights or legitimate interests in the <icqhelp.com>, <icqplugin.com>, <icqw.com>, <aoloffers.com>, <aolfavorite.com>, <aoladdress.com>, and <buddlist.com> domain names.

3. Respondent registered and used the <icqhelp.com>, <icqplugin.com>, <icqw.com>, <aoloffers.com>, <aolfavorite.com>, <aoladdress.com>, and <buddlist.com> domain names in bad faith.

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

FINDINGS

Complainant, America Online, Inc., is the holder of numerous trademark registrations worldwide for its AOL, ICQ and BUDDY LIST marks (collectively the “AOL marks”).  Specifically, Complainant holds Reg. No. 2,264,332 (registered on July 27, 1999) and Reg. No. 2,167,048 (registered on June 23, 1998) with the United States Patent and Trademark Office (“USPTO”) for its BUDDY LIST mark.  Complainant holds USPTO Reg. No. 2,411,657 (registered on December 12, 2000) for its ICQ mark.  In addition, Complainant holds USPTO Reg. No. 1,977,731 (registered on June 4, 1996) for its AOL mark.  Complainant also holds USPTO Reg. No. 2,325,291 (registered on March 7, 2000) and Reg. No. 2,325,292 (registered on March 7, 2000) for its AOL.COM mark.

Complainant and its predecessors-in-interest have used the AOL marks in interstate and international commerce in connection with the advertising and sale of Complainant’s computer and Internet-related goods and services.  Oftentimes, Complainant uses its AOL marks in connection with other words to describe various services that it provides, such as “ICQ Help.”  Specifically, Complainant uses its AOL marks at its portal website located at the <aol.com> domain name to promote its goods and services.  Every year millions of Complainant’s customers worldwide obtain goods and services offered under the AOL marks, and millions more are exposed to said marks through advertising and promotion.

Respondent registered the <icqw.com> domain name on June 1, 2001, the <icqhelp.com> domain name on July 2, 2001, the <icqplugin.com> domain name on December 7, 2001, the <aolfavorite.com> and the <buddlist.com> domain names on January 16, 2002, the <aoladdress.com> domain name on January 20, 2002, and the <aoloffers.com> domain name on February 3, 2002. 

Respondent is using the domain names to route Internet users to commercial websites that promote and provide links to third-party services, many of which compete directly with Complainant’s services.  Respondent also offers to sell the domain names in the WHOIS record.  Specifically, in the WHOIS contact information for each of the domain names, Respondent identifies its administrative contact and billing contact as “This Name is For Sale…” and “Make an Offer for This Domain Contact: bdomains@yahoo.com,” or a variation thereof. 

Complainant has not licensed or otherwise authorized Respondent to use its AOL marks.

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 AOL, ICQ and  BUDDY LIST marks through registration of the marks with the USPTO.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

Respondent merely added a generic or descriptive word to Complainant’s ICQ and AOL marks in its <icqhelp.com>, <icqplugin.com>, <aoloffers.com>, <aolfavorite.com>, and <aoladdress.com> domain names.  The mere addition of a generic or descriptive word does not distinguish the domain names from Complainant’s famous marks because the dominant element of the domain names continues to be Complainant’s mark.  Consequently, the Panel concludes that the  <icqhelp.com>, <icqplugin.com>, <aoloffers.com>, <aolfavorite.com>, and <aoladdress.com> domain names are confusingly similar to Complainant’s ICQ and AOL marks under Policy ¶ 4(a)(i).  See Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); see also Am. Online, Inc. v. Anytime Online Traffic School, FA 146930 (Nat. Arb. Forum April 11, 2003) (finding that Respondent’s domain names, which incorporated Complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity); see also Yahoo! Inc. v. Zuccarini, D2000-0777 (WIPO Oct. 2, 2000) (finding the registration and use of multiple domain names incorporating the distinctive and famous YAHOO!, YAHOOLIGANS!, and GEOCITIES marks, together with generic words such as ‘chat’ and ‘financial’ to be confusingly similar to Complainant’s marks and likely to mislead Internet users into believing that products and services offered by Respondents are being sponsored or endorsed by YAHOO! or GeoCities, given the similarity of the names and products and services offered).

Respondent’s <icqw.com> and <buddlist.com> domain names are common misspellings of Complainant’s ICQ and BUDDY LIST marks.  Thus, the Panel finds that the <icqw.com> and <buddlist.com> domain names are not sufficiently distinguishable from Complainant’s ICQ and BUDDY LIST marks pursuant to Policy ¶ 4(a)(i).  See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that <oicq.net> and <oicq.com> are confusingly similar to Complainant’s mark, ICQ); see also State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to Complainant’s STATE FARM mark).

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

Rights or Legitimate Interests

Respondent has not submitted any evidence to the Panel in response to the Complaint.  As a result, there is no evidence demonstrating that Respondent has any rights or legitimate interests in the <icqhelp.com>, <icqplugin.com>, <icqw.com>, <aoloffers.com>, <aolfavorite.com>, <aoladdress.com>, and <buddlist.com> domain names and the Panel accepts all of Complainant’s allegations as true.  Accordingly, the Panel presumes that Respondent lacks rights and legitimate interests in the domain names.  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 with respect to 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 Bayerische Motoren Werke AG v. Bavarian AG, FA110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a Response the Panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond). 

Respondent is not licensed or otherwise authorized to use Complainant’s AOL marks.  In addition, nothing in the WHOIS contact information for any of the domain names indicates that Respondent has been commonly known by the domain names.  As there is no evidence before the Panel to the contrary, the Panel concludes that Respondent has not been commonly known by the domain names.  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 Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question); 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”).

Respondent is using the domain names to direct Internet users to websites that promote and offer links to Complainant’s competitors’ websites.  Thus, the Panel finds that Respondent is not using the domain names for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that “[I]t would be unconscionable to find a bona fide offering of services in a respondent’s operation of web-site using a domain name which is confusingly similar to the Complainant’s mark and for the same business”); Am. Online Inc. v. Shenzhen JZT Computer Software Co., D2000-0809 (WIPO Sept. 6, 2000) (finding that Respondent’s operation of a website offering essentially the same services as Complainant and displaying Complainant’s mark was insufficient for a finding of bona fide offering of goods or services).

Respondent’s lack of rights and legitimate interests in the domain names is furthered by the fact that Respondent registered the names with the intent to sell them, as evidenced by Respondent’s WHOIS contact information.  Consequently, the Panel finds that Respondent lacks rights and legitimate interests in the domain names pursuant to Policy

¶ 4(a)(ii).  See Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where Respondent registered the domain name with the intention of selling its rights); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).

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

Registration and Use in Bad Faith

Since Respondent incorporates Complainant’s marks in their entirety in its domain names, it is likely that visitors will falsely believe that Complainant endorses or is affiliated with Respondent or the third-party services promoted at Respondent’s website.  Thus, the Panel finds that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  See Kmart v. Khan, 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  Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); 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).

Furthermore, Respondent’s WHOIS contact information which lists the administrative and billing contact as, “This Name is For Sale” and “Make an Offer for This Domain Contact: bdomains@yahoo.com,” or a variation thereof, clearly indicates that Respondent registered the domain names primarily for the purpose of selling the domain name registrations.  Thus, the Panel finds that Respondent registered and used the domain names in bad faith pursuant to Policy ¶ 4(b)(i).  See Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26, 2000) (finding “the manner in which the Respondent chose to identify itself and its administrative and billing contacts both conceals its identity and unmistakably conveys its intention, from the date of the registration, to sell rather than make any use of the disputed domain name”); see also Parfums Christain Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding bad faith where Respondent’s WHOIS registration information contained the words, “This is domain name is for sale”).

Accordingly, the Panel finds that 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 <icqhelp.com>, <icqplugin.com>, <icqw.com>, <aoloffers.com>, <aolfavorite.com>, <aoladdress.com>, and <buddlist.com> domain names be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  March 29, 2004

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/255.html