National Arbitration Forum

DECISION

America Online, Inc. v. Harry Liu

Claim Number: FA0412000384922

PARTIES

Complainant is America Online, Inc. (“Complainant”), represented by James R. Davis, of Arent Fox PLLC, 1050 Connecticut Avenue, NW, Washington, DC 20036.  Respondent is Harry Liu (“Respondent”), 10-5-5 Minye Xiang, DL, LN 116021, CHINA.

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <icq-sniffer.com>, <aim-sniffer.com> and <aimsniffer.com>, registered with Go Daddy Software, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically December 17, 2004; the National Arbitration Forum received a hard copy of the Complaint December 20, 2004.

On December 17, 2004, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the domain names <icq-sniffer.com>, <aim-sniffer.com> and <aimsniffer.com> are registered with Go Daddy Software, Inc. and that the Respondent is the current registrant of the name.  Go Daddy Software, Inc. verified that Respondent is bound by the Go Daddy Software, 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 December 21, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 10, 2005, 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-sniffer.com, postmaster@aim-sniffer.com and postmaster@aimsniffer.com by e-mail.

The Forum received a timely Response that was determined to be complete January 7, 2005.

On January 12, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant makes the following allegations in the case:

1. Respondent registered three domain names, <icq-sniffer.com>, <aim-sniffer.com> and <aimsniffer.com>, that contain in its entirety a protected mark that belongs to the Complainant.

2. Respondent has no rights to or legitimate interests in the domain names that contain in its entirety a protected mark that belongs to the Complainant.

3. Respondent registered and used the domain names in bad faith.

B. Respondent makes the following allegations in its Response:

1. Respondent does not address the confusing similarity of the domain names to Complainant’s marks but urges that he has not violated Complainant’s marks because the domain names are “entirely different” from Complainant’s AIM and ICQ marks.

2. Respondent concedes that he “has not acquired trademark or service mark rights for “AIM Sniffer” or “ICQ Sniffer.”

3. Respondent concedes that the <aimsniffer.com> domain name “is always inactive.”

4. Respondent asserts that he has closed the <icq-sniffer.com> site and that the <aimsniffer.com> site is inactive.

FINDINGS

Complainant established in this proceeding by extrinsic proof that it has legal and common law rights in the ICQ and AIM marks that are contained in their entirety in the disputed domain names.  Those rights extended to registrations by authorities in the Asian community from whence Respondent is using the domain names.

The Complainant’s first use in commerce for the ICQ mark was 1996 and its first use in commerce for the AIM mark was1997.

Complainant further established that it had rights to and legitimate interests in the marks that Respondent used in the disputed domain name prior to the time that Respondent registered the domain names. Respondent registered the three disputed domain names October 10, 2003.

Respondent concedes that he has no authority to use Complainant’s marks and that he has not acquired trademark or service mark rights for “AIM Sniffer” or “ICQ Sniffer.”

Complainant established that it has expended considerable sums in the development of the goodwill associated with its ICQ and AIM marks and Complainant’s international fame supports findings that secondary meaning attaches to the marks.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

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

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

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

(3) the domain names were registered and are being used in bad faith.

Identical to and/or Confusingly Similar

Complainant established by extrinsic proof in this proceeding that it has rights to and legitimate interests in the ICQ and AIM marks through registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,411,657 issued December 12, 2000 and Reg. No. 2,423,367 issued January 23, 2001, respectively).  See 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.); see also 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.”).

Complainant argues that the domain names that Respondent registered, <icq-sniffer.com>, <aim-sniffer.com> and <aimsniffer.com>, are confusingly similar to Complainant’s ICQ and AIM marks because the domain names incorporate the marks in their entirety and merely add the generic term “sniffer.”  The mere addition of a generic term is not enough to overcome a finding of confusing similarity between Respondent’s domain names and Complainant’s marks pursuant to 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 Sch., FA 146930 (Nat. Arb. Forum Apr. 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).

Furthermore, Respondent’s addition of the generic top-level domain “.com” to the domain names as well as the addition of a hyphen to the <icq-sniffer.com> and <aim-sniffer.com> domain names is insufficient to negate a finding of confusing similarity pursuant to Policy ¶ 4(a)(i).  See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding it is a “well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis”); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Innomed Tech., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that the hyphens and top-level domains are irrelevant for purposes of the Policy).

The Panel is not persuaded by Respondent’s assertion that the disputed domain names are not confusingly similar to Complainant’s marks due to the fact that Respondent’s addition of the term “sniffer” describes software that Respondent sells on its website. That might be the case had Respondent not attached the descriptive word to Complainant’s protected marks in order to opportunistically benefit from Complainant’s well-known goods and services and the good will that attaches to them.

The Panel finds that Complainant satisfied ICANN Policy ¶ 4(a)(i) with respect to showing “confusing similarity.”

 

Rights to or Legitimate Interests

Complainant established in this proceeding that it owns the marks contained in their entirety in the disputed domain names. While Respondent might argue that it is known by “sniffer,” Respondent has not shown that it is commonly known by the domain names that include Complainant’s protected marks. Respondent lacks rights and legitimate interests in the domain names pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (“[N]othing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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 mark precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

Additionally, the Panel finds that Respondent’s use of the <icq-sniffer.com> and <aim-sniffer.com> domain names, which incorporate confusingly similar variations of Complainant’s marks, to market Respondent’s “sniffer” software as being compatible with Complainant’s products is neither a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (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); see also G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that because Respondent is using the infringing domain name to sell prescription drugs it can be inferred that Respondent is opportunistically using Complainant’s mark in order to attract Internet users to its website).

Respondent cannot passively hold the <aimsniffer.com> domain name, because this constitutes use of Complainant’s protected marks in a domain name in a manner that prevents Complainant’s use of its mark.  The Panel finds that Respondent lacks legitimate rights and interests in the domain names pursuant to Policy ¶ 4(a)(ii).  See Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that Respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and Respondent is not commonly known by the domain name); see also Am. Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name).

The Panel does not agree with Respondent’s contention that use of Complainant’s marks to describe the sites at <icq-sniffer.com> and <aim-sniffer.com> constitutes acceptable “content” use.  Respondent produced no documents to show that he has the right to use Complainant’s protected marks and produced no documents to show that Complainant authorized Respondent to make use of Complainant’s protected marks in any way.  Respondent concedes, moreover, that he has no protected trademark interest in them.  The Panel is not persuaded that Respondent’s disclaimer stating that AIM and ICQ are registered trademarks of Complainant and that Respondent’s website is in no way affiliated with Complainant works to give Respondent rights to or legitimate interests in the <icq-sniffer.com> and <aim-sniffer.com> domain names.  Respondent is using the protected marks of Complainant to benefit from Internet users who seek Complainant’s products and services and end up at Respondent’s site.  Further, Respondent’s argument that leaving the <aimsniffer.com> domain name inactive for a year actually supports findings of bad faith.  The Panel finds that Complainant’s marks are not merely generic terms and that Respondent is knowingly and opportunistically attempting to benefit from the good will associated with Complainant’s development of its protected marks.

Complainant has satisfied the requirements of ICANN Policy ¶ 4(a)(ii) relative “rights or legitimate interests” in the domain names.

Registration and Use in Bad Faith

Complainant alleged that Respondent acted in bad faith in registering and either using or passively holding domain names that contained Complainant’s protected marks. The facts establish with certainty that Respondent had actual notice of Complainant’s marks.  Complainant’s marks have immense international fame and Respondent used them in domain names to sell software that was compatible with Complainant’s ICQ and AIM products.  Moreover, Respondent concedes that he had no trademark or other rights permitting this. The Panel finds that Respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii).  See 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); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof.”); see also Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name).

Additionally, the Panel finds that Respondent’s commercial use of domain names that are confusingly similar variations of Complainant’s famous marks to sell software compatible with Complainant’s products causes consumer confusion and constitutes additional evidence that Respondent registered and used the <icq-sniffer.com> and <aim-sniffer.com> domain names in bad faith pursuant to Policy ¶ 4(b)(iv).  See Fanuc Ltd. v. Mach. Control Serv., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent violated Policy ¶ 4(b)(iv) by selling used Fanuc parts and robots on the website <fanuc.com> because customers visiting the site were confused as to the relationship between Respondent and Complainant); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (finding bad faith where Respondent attempted to attract customers to its website, <efitnesswholesale.com>, and created confusion by offering similar products for sale as Complainant).

Respondent’s use of a disclaimer, which is not readily apparent on Respondent’s website but is accessible only after a user activates a certain hyperlink, does not negate the fact that Respondent registered and used the <icq-sniffer.com>, <aimsniffer.com> and <aim-sniffer.com> domain names in bad faith pursuant to Policy ¶ 4(b)(iii).  See Ciccone v. Parisi (Madonna.com), D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith.  First, the disclaimer may be ignored or misunderstood by Internet users.  Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions.  Such confusion is a basis for finding a violation of Complainant’s rights.”); see also Thomas & Betts Int’l v. Power Cabling Corp., Inc., AF-0274 (eResolution Oct. 23, 2000) (finding bad faith based upon initial interest confusion despite disclaimer and link to Complainant’s website on Respondent’s website).

The Panel also finds that Respondent passively held the <aimsniffer.com> domain name for a sufficient time to support findings of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See LFP, Inc. v. B & J Props., FA 109697 (Nat. Arb. Forum May 30, 2002) (recognizing that in certain instances excusable delays will inevitably arise, but noting that those delays must be quantifiable and limited; they cannot extend indefinitely); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith).

For the reasons set out above, the Panel is not persuaded by Respondent’s argument that Complainant’s marks are generic or that Respondent’s hard to find disclaimer excuses this opportunistic attempt to capitalize on Complainant’s protected marks.  Further, it is difficult to accept Respondent’s statement that he acted in good faith conduct when Respondent was attempting to sell software that was designed to be compatible with Complainant’s products using domain names that used Complainant’s protected marks as if the offer came from Complainant or one with authority to act in Complainant’s name.

Complainant satisfied the requirements of ICANN Policy ¶ 4(a)(iii) relative to showing “bad faith registration and use.”

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-sniffer.com><aim-sniffer.com>, and <aimsniffer.com> domain names be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist
Dated: January 26, 2005

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