DECISION

America Online, Inc. v. Tony Lusk aka DotComSales Organization

Claim Number:  FA0406000283538

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 Tony Lusk a/k/a DotComSales Organization (“Respondent”), 2670 Leafmore Drive SE, Smyrna, GA 30082-1819.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <icqservice.com>, <icqservices.com>, <icqnames.com>, <icqmessaging.com>, <icqhosting.com>, <icqdomains.com>, <icqdomain.com>, <icqdns.com>, <ezicq.com> and <addicq.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 June 4, 2004; the Forum received a hard copy of the Complaint on June 7, 2004.

On June 7, 2004, Enom, Inc. confirmed by e-mail to the Forum that the domain names <icqservice.com>, <icqservices.com>, <icqnames.com>, <icqmessaging.com>, <icqhosting.com>, <icqdomains.com>, <icqdomain.com>, <icqdns.com>, <ezicq.com> and <addicq.com> are registered with Enom, Inc. and that Respondent is the current registrant of the domain 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 June 9, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 29, 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@icqservice.com, postmaster@icqservices.com, postmaster@icqnames.com, postmaster@icqmessaging.com, postmaster@icqhosting.com, postmaster@icqdomains.com, postmaster@icqdomain.com, postmaster@icqdns.com, postmaster@ezicq.com and postmaster@addicq.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 July 12, 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 <icqservice.com>, <icqservices.com>, <icqnames.com>, <icqmessaging.com>, <icqhosting.com>, <icqdomains.com>, <icqdomain.com>, <icqdns.com>, <ezicq.com> and <addicq.com> domain names are confusingly similar to Complainant’s ICQ mark.

2. Respondent does not have any rights or legitimate interests in the <icqservice.com>, <icqservices.com>, <icqnames.com>, <icqmessaging.com>, <icqhosting.com>, <icqdomains.com>, <icqdomain.com>, <icqdns.com>, <ezicq.com> and <addicq.com> domain names.

3. Respondent registered and used the <icqservice.com>, <icqservices.com>, <icqnames.com>, <icqmessaging.com>, <icqhosting.com>, <icqdomains.com>, <icqdomain.com>, <icqdns.com>, <ezicq.com> and <addicq.com> domain names in bad faith.

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

FINDINGS

Complainants, America Online, Inc. and ICQ, Inc. (collectively “AOL,” hereinafter “Complainant”) have been using the ICQ mark as early as November 1996 in connection with telecommunications services, computer operating programs, computer software and prerecorded computer programs for assessing computer networks and computer systems comprising computer hardware and computer software for electronic communications, computer software for accessing online electronic diaries, online databases, websites, online chat rooms and other computer related services. 

Complainant is the owner of numerous trademarks, service marks and trade names including the ICQ, ICQLoveMatch, ICQDownload, ICQmail and ICQPhone marks.  Complainant registered the ICQ mark with the United States Patent and Trademark Office on October 29, 1997 (Reg. No. 2411657).  Since its first adoption in 1996, Complainant has used the ICQ mark continuously and extensively in interstate and international commerce in connection with the advertising and sale of goods and services.

Respondent registered the <icqservice.com>, <icqservices.com>, <icqnames.com>, <icqmessaging.com>, <icqhosting.com>, <icqdomains.com>, <icqdomain.com>, <icqdns.com>, <ezicq.com> and <addicq.com> domain names between October 14, 2002 and December 27, 2003.

Respondent is using the domain names to promote various online services, including many that compete directly with Complainant.  In fact, some of the websites prominently display Complainant’s famous ICQ mark. 

Additionally, Respondent has demonstrated a history of registering  domain names that infringe upon famous marks, such as <fordfiestas.com> and <harleybusiness.com>.

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 names 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 names; and

(3) the domain names have been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant has established in this proceeding that it has rights in the ICQ mark through registration with the United States Patent and Trademark Office and by continuous use of its mark in commerce for the last eight years.  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).

The domain names registered by Respondent are confusingly similar to Complainant’s ICQ mark because the domain names incorporate Complainant’s mark in its entirety and deviates from it only by adding generic or descriptive words and phrases such as “domains” “ez” “add” and “service.”  ICQ is the sole distinctive component of the domains and the commercial impression created by these domains is that the service provided at Respondent’s sites are provided or endorsed by AOL.  The mere addition of a generic or descriptive word to a registered mark does not negate the confusing similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).  See L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with Complainant’s registered mark “LLbean” does not circumvent Complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy); see also 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 Westfield Corp., Inc. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element).

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

Rights or Legitimate Interests

Complainant asserts that Respondent has no rights or legitimate interests in the domain names.  Due to Respondent’s failure to respond to the Complaint, it is assumed that Respondent lacks rights and legitimate interests in the disputed domain names.  The burden shifts to Respondent to show that it does have rights or legitimate interests once Complainant establishes a prima facie case pursuant to Policy ¶ 4(a)(ii).  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by Complainant that Respondent has no right or legitimate interest is sufficient to shift the burden of proof to Respondent to demonstrate that such a right or legitimate interest does exist).

Moreover, the Panel may accept all reasonable allegations and inferences to the Complaint as true because Respondent has not submitted a Response.  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 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).

Respondent is using the <icqservice.com>, <icqservices.com>, <icqnames.com>, <icqmessaging.com>, <icqhosting.com>, <icqdomains.com>, <icqdomain.com>, <icqdns.com>, <ezicq.com> and <addicq.com> domain names to redirect Internet users to commercial websites that not only makes prominent use of Complainant’s ICQ marks, but also offer online services that are not affiliated with Complainant in any way.  Respondent has no legitimate right to misuse Complainant’s well-known name and ICQ mark in promoting the Internet shopping services of other third parties.  Respondent’s use of domain names that are confusingly similar to Complainant’s ICQ mark to redirect Internet users interested in Complainant’s services to commercial website that display Complainant’s mark and offer services similar to Complainant’s services is not a use in connection with a bona fide offering of goods pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  See Oly Holigan, L.P. v. Private, FA 95940 (Nat. Arb. Forum Dec. 4, 2000) (finding no rights or legitimate interests in a misspelled domain name as Respondent was merely using it to redirect Internet users to, inter alia, an online casino); see also Nike, Inc. v. Ben Dias, FA 135016 (Nat. Arb Forum Jan. 7, 2001) (finding no “bona fide” offering of goods or services where Respondent used Complainant’s mark without authorization to attract Internet users to its website, which offered both Complainant’s products and those of Complainant’s competitors). 

Moreover, Respondent has offered no evidence and there is no proof in the record suggesting that Respondent is commonly known by the <icqservice.com>, <icqservices.com>, <icqnames.com>, <icqmessaging.com>, <icqhosting.com>, <icqdomains.com>, <icqdomain.com>, <icqdns.com>, <ezicq.com> and <addicq.com> domain names.  Thus, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

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

Registration and Use in Bad Faith

Respondent intentionally registered domain names that contain in its entirety Complainant’s well-known mark and did so for Respondent’s commercial gain.  Respondent’s domain names divert Internet users who seek Complainant’s ICQ mark to Respondent’s commercial website through the use of domain names that are confusingly similar to Complainant’s mark.  Furthermore, Respondent is unfairly and opportunistically benefiting from the goodwill associated with Complainant’s ICQ mark.  Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Bank of America Corp v. Out Island Props., Inc., FA 15431 (Nat. Arb. Forum June 3, 2003) (stating that “[s]ince the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for complainant would become confused as to Complainant’s affiliation with the resulting search engine website” in holding that the domain names were registered and used in bad faith pursuant to Policy ¶ 4(b)(iv)); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also eBay, Inc. v. Progressive Life Awareness Network, D2001-0068 (WIPO Mar. 16, 2001) (finding bad faith where Respondent is taking advantage of the recognition that eBay has created for its mark and therefore profiting by diverting users seeking the eBay website to Respondent’s site).

Additionally, Respondent’s registration of domain names incorporating Complainant’s well-known registered mark in its entirety and deviates only with the addition of a generic or descriptive term, suggests that Respondent knew of Complainant’s rights in the ICQ mark.  Furthermore, the generic or descriptive term incorporated in the domain names describes Complainant’s business.  Thus, the Panel finds that Respondent chose the <icqservice.com>, <icqservices.com>, <icqnames.com>, <icqmessaging.com>, <icqhosting.com>, <icqdomains.com>, <icqdomain.com>, <icqdns.com>, <ezicq.com> and <addicq.com> domain names based on the distinctive and well-known qualities of Complainant’s mark.  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 Pavillion Agency, Inc. v. Greehnouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”).

Respondent is using the disputed domain names in connection with commercial websites that make prominent use of the ICQ mark.  Contrary to the misleading manner in which Respondent uses the ICQ mark in the domains and websites, Respondent’s online services are not affiliated with Complainant in any way.  Respondent’s use of the ICQ marks and logos in this manner to route traffic to this site proves that Respondent has actual knowledge of Complainant’s service and registered and used the infringing domains to profit from consumer confusion.  The Panel finds that, by creating confusion around Complainant’s mark, Respondent is attempting to disrupt the business of a competitor.  Respondent’s use of Complainant’s mark is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business); see also SR Motorsports v. Rotary Performance, FA 95859 (Nat. Arb. Forum Jan. 4, 2001) (finding it “obvious” that the domain names were registered for the primary purpose of disrupting the competitor’s business when the parties are part of the same, highly specialized field).

Furthermore, evidence of Respondent’s bad faith use of the domain names is evidenced by Respondent’s bad faith pattern of registering domain names that infringe upon famous marks.  In addition to this case, Respondent has registered various domain names that violate third party marks, revealing Respondent’s disregard for the intellectual property rights of others.  This bad faith pattern violates ¶ 4(b)(ii) of the Policy.  See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks); see also YAHOO! Inc. v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) (finding bad faith pattern pursuant to Policy ¶ 4(b)(ii) in Respondent’s registration of two domain names incorporating Complainant’s YAHOO! Mark).

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 <icqservice.com>, <icqservices.com>, <icqnames.com>, <icqmessaging.com>, <icqhosting.com>, <icqdomains.com>, <icqdomain.com>, <icqdns.com>, <ezicq.com> and <addicq.com> domain names be TRANSFERRED from Respondent to Complainant.

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

Dated:  July 26, 2004

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